The Complainant is Chocoladefabriken Lindt & Sprüngli AG, of Kilchberg, Switzerland, represented by Mayer Brown LLP, of Germany.
The Respondent is Web Services Pty, of New Delhi, India.
The disputed domain name <ghirardellichocolate.com> is registered with Answerable.com (I) Pvt Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2008. On August 21, 2008, the Center transmitted by email to Answerable.com (I) Pvt Ltd a request for registrar verification in connection with the domain name at issue. On August 22, 2008, Answerable.com (I) Pvt Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 Respondent of the Complaint, and the proceedings commenced on August 28, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 17, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on September 18, 2008.
The Center appointed Jordan S. Weinstein as the sole panelist in this matter on October 2, 2008. 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.
Complainant is the owner of numerous trademark registrations for GHIRARDELLI and GHIRARDELLI CHOCOLATE in connection with various food products including chocolate, in many countries around the world. The earliest of these registrations issued in the United States in 1925. Complainant is also the owner of numerous domain names which contain the names GHIRARDELLI and GHIRARDELLI CHOCOLATE. The earliest of which, <ghirardelli.com>, was registered on June 24, 1998.
Complainant asserts that it acquired in 1998 the Ghirardelli Chocolate Company (“Ghirardelli”) of San Leandro, California. Ghirardelli was incorporated in 1852 and has been in continuous operation since that time. Ghirardelli provides premium chocolate products, including Ghirardelli Squares chocolates. Ghirardelli operates soda fountain and chocolate shops across the USA. Complainant asserts that GHIRARDELLI ranks among Complainant's major brands.
Complainant asserts that Ghirardelli is a wholly-owned subsidiary of Complainant and that Complainant has granted Ghirardelli a license to use Complainant's GHIRARDELLI trademarks and domain names.
Complainant asserts that it and Ghirardelli use and promote the GHIRARDELLI trademarks worldwide in connection with high quality chocolate products, as a result of which the GHIRARDELLI trademark is widely recognized as indicating the products of Complainant and Ghirardelli. Complainant asserts that 2007 net trade sales of Ghirardelli were in the hundreds of millions of dollars. As a result, Complainant asserts that it has comprehensive rights in the trademarks GHIRARDELLI and GHIRARDELLI CHOCOLATE.
Complainant asserts that the domain name <ghirardellichocolate.com> is identical or confusingly similar to Complainant's registered trademarks GHIRARDELLI and GHIRARDELLI CHOCOLATE, as well as to Complainant's numerous domain names. Complainant asserts that the “.com” suffix is incapable of diminishing the identity or confusing similarity of the domain name with Complainant's marks, and that the domain name <ghirardellichocolate.com> fully comprises Complainant's registered trademarks GHIRARDELLI and GHIRARDELLI CHOCOLATE. Because “chocolate” is merely descriptive of the chocolate products sold under the GHIRARDELLI trademark, Complainant asserts that the addition of “chocolate” to GHIRARDELLI in the <ghirardellichocolate.com> domain name is confusingly similar to Complainant's GHIRARDELLI registered mark.
Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name because Complainant has not granted Respondent any license or otherwise permitted Respondent to use Complainant's GHIRARDELLI or GHIRARDELLI CHOCOLATE trademarks; that Respondent does not make, has not made nor has undertaken demonstrable preparations to make use of the domain name <ghirardellichocolate.com> in connection with a bona fide offering of goods or services; that there is no indication whatsoever that Respondent has done or intends to do any business in connection with the terms GHIRARDELLI or GHIRARDELLI CHOCOLATE; that Respondent is actually using the domain name <ghirardellichocolate.com> to redirect Internet users to a parking page with active links to commercial websites referring both to Ghirardelli as well as to some of its direct competitors; and that from this activity Respondent is seeking “click-through commissions” from diverted Internet users who were seeking to reach Complainant's or Ghirardelli's website; that Respondent is not commonly known by the domain name <ghirardellichocolate.com> and that Respondent neither owns trademark or any other type of rights in GHIRARDELLI or GHIRARDELLI CHOCOLATE; that Respondent is not making a legitimate noncommercial or fair use of the domain name <ghirardellichocolate.com> because its website features hyperlinks to active commercial websites of third parties which are competitors of Complainant, predominantly for the purpose of generating click-through revenues.
Complainant asserts that the domain name <ghirardellichocolate.com> was registered and is being used in bad faith because Respondent is using the disputed domain name intentionally to attract, for commercial gain, Internet users to Respondent's website by creating a likelihood of confusion with Complainant's marks. As evidence, Complainant asserts that Respondent's website displays numerous links to the active websites of third parties, some of which are competitors of Complainant or Ghirardelli. Complainant asserts that Respondent is profiting from customers' initial confusion and is exploiting Complainant's trademarks for commercial gain by obtaining click-through commissions when Internet users click on the links contained in Respondent's website. Complainant asserts there can be no reasonable doubt that Respondent was certainly aware of Complainant's well-known trademarks GHIRARDELLI or GHIRARDELLI CHOCOLATE at the time it registered the disputed domain name. Complainant bases this assertion on its evidence of longstanding registered trademark protection in over 20 countries worldwide, all with priority over the disputed domain name, as well as on Complainant's assertion that its trademarks GHIRARDELLI and GHIRARDELLI CHOCOLATE are recognized worldwide as indicating products emanating from Complainant and Ghirardelli, as well as from the significant sales figures of GHIRARDELLI products discussed above.
Furthermore, Complainant asserts that Respondent is professionally engaged in the business of cybersquatting as evidenced by six UDRP decisions rendered against it, involving such well-known trademarks as PORSCHE and VALIUM.
Respondent did not reply to Complainant's contentions.
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements in order to prevail in this proceeding:
(i) the domain name 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.
It is not sufficient to prevail that a complainant prove only registration in bad faith; rather, the complainant must prove both registration and use in bad faith. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001; Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001.
However, the Policy states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith:
(i) Circumstances indicating that [the respondent has] registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent 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 respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [its] website or location or of a product or service on [its] website or location.
Policy, paragraph 4(b). These circumstances are non-exclusive, and a panel may consider other circumstances as constituting registration and use of a domain name in bad faith. Id.
The respondent may demonstrate rights in or legitimate interests to the domain name by any of the following, without limitation:
(i) Before any notice to you of the dispute, your use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you, as an individual, business, or other organization have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Policy, paragraph 4(c).
Where, as here, a respondent is in default, the panel may draw such inferences as it considers appropriate. Policy, paragraph 14(b).
Respondent's domain name <ghirardellichocolate.com> is identical to Complainant's registered trademark GHIRARDELLI CHOCOLATE, and is confusingly similar to Complainant's registered trademark GHIRARDELLI. The addition of the descriptive term “chocolate” to the registered term GHIRARDELLI does not serve to distinguish Respondent's domain name from Complainant's registered trademark; rather, the addition of the term would likely lead Internet users to believe that the domain name referred to the chocolate products sold under Complainant's GHIRARDELLI trademark. See Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888. The Panel finds that Complainant has provided sufficient evidence to establish element 4(a)(i) of the Policy.
Complainant asserts, and Respondent has failed to rebut, that Respondent is not affiliated with or related to Complainant; that Respondent is not licensed by Complainant or otherwise authorized to use Complainant's trademarks; and that Respondent is not generally known by the domain name at issue, has not acquired any trademark rights in the name, and is not making bona fide fair use of Complainant's marks. Combined with the inferences this Panel may make as a result of Respondent's default herein, this Panel finds Complainant has made a prima facie showing of bad faith which Respondent has failed to rebut. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions § 2.1 and cases cited therein. As a result, Complainant has established element 4(a)(ii) of the Policy.
The Panel finds that Complainant has provided sufficient evidence satisfying paragraph 4(b)(iv) of the Policy, namely that by using the domain name, Respondent intentionally intended to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation or endorsement of Respondent's website.
In addition to the inferences to be drawn from Respondent's default in this proceeding, the Panel draws an inference that Respondent was well aware of Complainant's trademarks by the fact that it combined the descriptive word CHOCOLATE with Complainant's mark GHIRARDELLI; that Respondent's website linked to the domain name in dispute predominantly contains links to other websites regarding chocolates, which are the same types of products sold by Complainant under its marks; and that some of these links resolve to the websites of competitors of Complainant. This latter fact makes it clear to the Panel that the purpose of Respondent's website is to obtain click-through revenue from unsuspecting Internet users seeking chocolate products under Complainant's trademarks.
As a result, the Panel finds that Respondent's registration and linking of its domain name <ghirardellichocolate.com> to a pay-per-click search page in the circumstances is in bad faith. See mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; see also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, Teachers Insurance and Annuity Association of America v. Wreaks Communications Group, WIPO Case No. D2006-0483.
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 <ghirardellichocolate.com> be transferred to the Complainant.
Jordan S. Weinstein
Dated: October 16, 2008