The Complainant is Perfetti Van Melle S.p.A. of Lainate, Italy, internally represented.
The Respondent is DomainPrivacyGuard.com 3686459 of Studio City, California, United States of America.
The disputed domain name <chupa-chupa.net> is registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 11, 2009. On September 11, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On September 12, 2009, eNom 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” or “UDRP”), 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 September 18, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 8, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 9, 2009.
The Center appointed Anthony R. Connerty as the sole panelist in this matter on October 27, 2009. 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.
The Chupa Chups lollipops were first produced in Spain in 1958. They are now sold all over the world. Net sales in 2008 exceeded USD 240 million. Advertising costs exceeded USD 18 million.
The Complainant is the owner of numerous trademarks for the words “Chupa Chups” and the Chupa Chups device or logo. The trademarks are registered in various countries worldwide. Those trademarks – used primarily in relation to lollipops – are listed in Annex 3 and Annex 4 of the Complaint. Printouts from websites dedicated to Chupa Chups products are shown in Annex 5.
The evidence filed by the Complainant in support of its claim has not been challenged by the Respondent.
The Complainant claims that the disputed domain name is confusingly similar and almost identical to its registered trademark CHUPA CHUPS; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant's contentions.
Paragraph 15(a) of the Rules states that a panel “shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy provides that, to justify a claim to the transfer of a domain name, a complainant must prove each and every one of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the respondent has registered and used the domain name in bad faith.
The burden of proof is on the Complainant.
In relation to the paragraph 4(a)(ii) requirements as to rights and legitimate interests, paragraph 4(c) lists ways in which a respondent may show that it has such rights or interests.
In relation to the bad faith requirements of paragraph 4(a)(iii), the provisions of paragraph 4(b) list circumstances which shall be evidence of such bad faith.
The Complainant's case is that, differing in only one letter, the disputed domain name is confusingly similar to its trademark.
Merely changing one letter does not alter the visual similarity between the Complainant's CHUPA CHUPS trademark and “chupa-chupa”: A & F Trademark, Inc., Abercrombie & Fitch Stores, Inc., Abercrombie & Fitch Trading Co., Inc. v. Party Night, Inc., WIPO Case No. D2003-0172.
In addition, the two are phonetically similar: Dunkin' Donuts Incorporated and Dunkin' Donuts USA, Inc. v. RandomThinkers and Patrick Huba, WIPO Case No. D2001-0104.
On the basis of the same principle, the insertion of the hyphen in “chupa-chupa” cannot alter the fact that the disputed domain name is confusingly similar to the trademark.
Furthermore, the use of the gTLD suffix “.net.” is of no significance. That addition does nothing to distinguish the disputed domain name from the Complainant's well-known trademark: Hoffmann-La Roche Inc. v. WhoisGuard, WIPO Case No. D2005-1288.
The Panel is satisfied that the Complainant has shown that the disputed domain name is confusingly similar to its trademark for the purposes of paragraph 4(a)(i) of the Policy.
The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy – or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name.
Given that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating that trademark, the Panel is satisfied, also taking into account the Panel's findings here below, that the Complainant has shown for the purposes of paragraph 4(a)(ii) of the Policy that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant's case is that the Respondent cannot have been unaware of the existence of its trademark and must therefore have known of the risk of confusion in the minds of consumers.
Reliance is placed on information given in Wikepedia, an excerpt from which contained in Annex 6 to the Complaint. There it is said that Chupa Chups was originally a Spanish lollipop company founded by Enric Bernat. He sold a striped bonbon on a wooden stick. Within five years Bernat's sweets were sold in 300,000 outlets. By the year 2003, 4 billion lollipops were sold in over 150 countries. Ninety percent of sales are abroad, and the company turnover is in the hundreds of millions of euros.
The excerpt states that the Chupa Chups logo was designed in 1969 by Salvador Dali. Advertising campaigns promoting the brand have included Madonna and the Spice Girls.
In 2006 the company was sold to the Complainant, the Dutch – Italian multinational corporation Perfetti Van Melle.
Reliance is also placed on various search results from Google. These are set out in Annex 7. The Complainant's case is that the Chupa Chups name is so well-known that numerous results pertaining to the Complainant are displayed when using a search engine such as Google.
Registration of a domain name containing a well-known trademark is evidence of bad faith in circumstances where the respondent knew – or can be taken to have known – of the existence of the registration of that trade mark. In The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113, the panel said that:
“Complainant's first contention of bad faith is based on the argument that at the time of registration of the disputed domain names Respondent knew, or at least should have known [of], the existence of Complainant's trademarks, and that registration of a domain name containing well-known trademarks constitutes bad faith per se.
The Panel finds that, in addition to GAP and OLD NAVY, the BANANA REPUBLIC trademark has also acquired extensive and worldwide reputation and is to be regarded as a well-known trademark.
As one panel held before, ‘the Complainant's worldwide reputation, and presence on the Internet, indicates that Respondent was or should have been aware of the marks prior to registering the disputed Domain Name'. Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517. In light of the reputation of the GAP, BANANA REPUBLIC and OLD NAVY trademarks, it is clear that Respondent in all likelihood knew of the existence of Complainant's trademarks.”
The Complainant in this case has produced evidence of its worldwide reputation and of its presence on the Internet. It is reasonable to assume that the Respondent knew of the Complainant's trademark.
The Panel is also entitled to take into account the fact that the Respondent could have answered the Complainant's arguments and evidence but has failed to do so. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from the failure of a party to comply with a provision or requirement of the Rules.
In the light of the Complainant's submissions and evidence, the Panel – noting that the paragraph 4(b) circumstances are without limitation – is satisfied that the Complainant has proved the bad faith requirements of paragraph 4(a)(iii).
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 <chupa-chupa.net> be transferred to the Complainant.
Anthony R. Connerty
Dated: November 8, 2009