The Complainant is Perfetti Van Melle SpA of Lainate, Milan, Italy, represented by Perfetti Van Melle S.p.A., Italy.
The Respondent is Pavel Tkachev of Tallinn, Harjumaa, Estonia.
The disputed domain name <chupa-chup.com> is registered with Name.com LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2010. On April 15, 2010, the Center transmitted by email to Name.com LLC. a request for registrar verification in connection with the disputed domain name. On April 16, 2010, Name.com LLC 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 April 20, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 10, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 11, 2010.
The Center appointed J. Nelson Landry as the sole panelist in this matter on May 21, 2010. 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 Complainant is the owner of several trademark registrations and applications for CHUPA CHUPS words and logos in association with products of different international classes. The trademark CHUPA CHUPS (herein the “Trademark” or the “CHUPA CHUPS Trademarks”) has been used in association with these products, more particularly lollipops, since 1958 originally in Spain and throughout the world, including Estonia - home country of the Respondent. At the present time the CHUPA CHUPS products are widely advertised and sold successfully all around the world, as one can see on the Complainant's website. The net sales of CHUPA CHUPS products worldwide in 2009, exceeded USD 232,700,000.
The Complainant's web site “www.chupachups.com” is specifically dedicated to CHUPA CHUPS products and it describes and illustrates the development history, the products and their promotions. The expression or combination CHUPA CHUPS is also present in Wikipedia, the famous Internet free encyclopaedia.
The Complainant has never had any connection, affiliation or commercial relationship with the Respondent. The Respondent has never approached the Complainant to inform it of his intention to register the disputed domain name or to ask for consent to its registration.
As soon as the Complainant found out about the registration of the domain name <chupa-chup.com>, it wrote an email to the Respondent, explained its rights in the Trademark and asked for the transfer of the domain name. The Respondent never replied to the Complainant.
Upon attempting to open the page on the website at the address “www. chupa-chup.com”, the visitor is informed that “Internet Explorer cannot show this Web page.”
The disputed domain name was appears to have been registered on September 21, 2009.
The Complainant represents that it is the owner of several Trademark registrations and applications in respect of the CHUPA CHUPS words in association with products in several international classes and used with lollipops. The use of the Trademark in association with lollipop started in Spain in 1958 and today the promotion and sale of the products under the Trademark are made throughout the world. The Complainant further represents that the sales in 2009 throughout the world was in excess of USD 232,700,000 and the promotion costs were in excess of USD 16 million and amongst its marketing tools, the Complainant refers to its website “www.chupachups.com” where the products are identified, promoted along with the history of their development. The Complainant further represents that CHUPA CHUPS is also present on the Internet free encyclopaedia.
The Complainant submits that with one missing letter in the disputed domain name, the later is confusingly similar with the registered Trademark of the Complainant.
The Complainant contends that the Respondent is not commonly known by the disputed domain name and to its knowledge the Respondent has no rights or legitimate interests prior use of the name within the disputed domain name. While the webpage relating to the disputed domain name was not active on the date of the Complaint, the Complainant fears that upon eventually using it, the Respondent's goal would be to attempt to benefit from the fame of its Trademark without engaging in any advertising or promotional costs in which the Complainant has invested such considerable sums. The Complainant contends that in view of its world wide famous Trademark which is a fancy expression, the choice of the disputed domain name is not legitimate.
The Complainant states that it never had any connection, affiliation or commercial relationship with the Respondent nor has ever been approached by the later about his intention either to register the disputed domain name or to ask the Respondent's consent to register it which contact he would have done if he was acting in good faith.
The Complainant submits as further evidence of bad faith on the part of the Respondent the absence of any response from the Respondent pursuant to Complainant's letter explaining its rights and asking for the transfer to it of the disputed domain name.
Relying on the almost identity between the disputed domain name and the Trademark, the Complainant submits that consumer may see a link between the products of the Complainant and the disputed domain name and that the Respondent who, according to the Complainant, could not be unaware of the existence of the Complainant's CHUPA CHUPS products sold around the world.
According to the Complainant, additional evidence of Respondent's bad faith is shown in two very easy verifications that could have made: first a very simple search among international and national trademark registers would have revealed the existence of the Complainant's several registrations, second as an alternative and easier search on Google would have shown that CHUPA CHUPS is a trademark widely advertised and used by the Complainant and that considering the special and non-descriptive nature of the Trademark must have been familiar and known to the Respondent as illustrated by the Google search which could be so easily done. The Complainant concludes on the basis of these representations, that the disputed domain name was registered and used in bad faith by the Respondent.
The Respondent did not reply to the Complainant's contentions.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order for a domain name to 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.
Prior to engaging into the discussion, the Panel considers appropriate to comment on the apparent difficulty of effecting notice to the Respondent of the dispute. In attempting delivery to the Respondent of the Notice of Complaint and the Complaint by e-mail and delivery of Written Notice by UPS and fax, there were several difficulties (noting nevertheless that the e-mail address, postal address, name and telephone and fax numbers of the Respondent were confirmed the Registrar of the domain name). The record shows that the delivery of the Complaint and Notice of Default were made by e-mail. The Panel finds that the Center has taken all reasonable means to serve and notify the Respondent.
The Complainant has provided ample detailed evidence about the adoption and use of the Trademark CHUPA CHUPS in association with lollipops and several other products and devices in different international classes. The evidence also comprised several pages of trademark registrations in many countries in the world including Estonia, the country of residence of the Respondent. The extent of the worldwide use of the Trademark since its adoption in 1958 and its substantial promotion demonstrate that there is a considerable amount of reputation, goodwill, if not fame, associated therewith. The Panel finds that the Complainant has rights in the Trademark.
The disputed domain name differs from the Trademark only in respect of a hyphen between “chupa” and “chup” and the absence of the letter “s” on “chups” along with the addition of the suffix “.com”. It is well established in several UDRP panel decisions that these minor modifications to the Trademark do not diminish in any significant way the likelihood of the confusion of the disputed domain name with the Trademark.
The Panel finds that the disputed domain name is confusingly similar to the Trademark of the Complainant.
The first criterion has been met.
Respondent has not filed any response in this proceeding. Therefore the Panel may accept all reasonable inferences and allegations included in the Complaint as true. The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name by stating that the Respondent has never been known by the name <chupa-chup.com> or the disputed domain name and is not making a legitimate noncommercial or fair use of the disputed domain name.
Furthermore, the Complainant has never given a license nor in any way authorized the Respondent to make use of the Complainant's Trademark and consequently this establishes that the Respondent is not a licensed or authorized user of the Complainant's Trademark. The Panel finds that the use of the Complainant's Trademark in the disputed domain name is not a legitimate use, even more so when the Complainant has not authorized its use.
As held by the three member panel in Malayan Banking Berhad v. Beauty, Success & truth International, WIPO Case No. D-2008-1393, “the manner of use of the disputed domain name is also germane for determining rights and legitimate interests. The use of a domain name which is identical or confusingly similar to the Complainant's trademark with an intention of deriving advantage from user confusion and diverting Internet users to other commercial sites does not confer legitimate rights on the Respondent.” See also Bridgestone Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0795. This statement applies well with the facts of this case.
There is no evidence that the Respondent has ever engaged is any legitimate business under the Complainant's Trademark.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The second criterion has been met.
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the 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 the 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.
It should be noted that the circumstances of bad faith are not limited to the above.
The Trademark CHUPA CHUPS is a fanciful Trademark consisting of two non descriptive terms and has been intensely used and promoted in several countries of the world including Estonia where the Respondent resides according to the information confirmed by the disputed domain name registrar herein. According to the evidence provided by the Complainant with Wikipedia free encyclopaedia and particularly the Google search that discloses in excess of one million entries under CHUPA CHUPS, these searches demonstrate how easily one can verify the broad and accessible knowledge of the existence and worldwide use of this Trademark, assuming one does not know how to verify the presence of a trademark registration on a national register. This Panel cannot imagine based on the present circumstances that the Respondent was not aware of its existence and fame when he selected and registered the disputed domain name. The Panel finds that, in the absence of any explanation by the Respondent, the disputed domain name was registered in bad faith.
It does not appear that the disputed domain name is used in any way by the Respondent in that no website corresponding to its address can be located. As it has been again reiterated in Malayan Banking Berhad v. Beauty, Success & Truth International, supra, “Panels have consistently held that passive holding of domain names can, under certain circumstances, be considered bad faith use of the domain name. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Polaroid Corporation v. Jay Strommen, WIPO Case No. D2005-1005”
Furthermore, as it appears from the record there appear to have been serious difficulties in notifying the Respondent with the Complaint and also with the Notice of Default. Although the e-mail, postal address and fax numbers were confirmed by the Registrar, it is only the delivery by e-mail (with the Complaint and the subsequent one with the Notice of Default) that appears to have been successfully delivered. The delivery of Written Notice by UPS and by fax apparently could not be successfully completed. Such facts, activities and lack response and reception of documents sent by mail or e-mail do not correspond at all in this Panel's view to the behaviour of a person acting in good faith. It is more confirmation of the bad faith attitude and behaviour of the Respondent in this case.
Again, as held in the Malayan Banking Berhad decision, “the Panel can make reasonable inferences if the Respondent has provided an incorrect address or has used a post office box number as its address. See also The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340”. With the support of these earlier panel decisions applied to the similar behaviour by the Respondent in the present case, which the Panel adopts, the latter finds that the Respondent has registered the disputed domain name in bad faith and has also used same in bad faith.
The third criterion has been met.
The Panel concludes that:
(a) the domain name <chupa-chup.com> is confusingly similar to the Complainant's Trademark;
(b) the Respondent has no rights or legitimate interest in the domain name in dispute;
(c) the domain name in dispute has been registered and is being used in bad faith.
Therefore, in accordance with Paragraphs 4(a) and 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <chupa-chup.com> be transferred to the Complainant.
J. Nelson Landry
Dated: May 31, 2010