Complainant is C & C International Ltd of Dublin, Ireland, represented by FRKelly, Ireland.
Respondent is Transure Enterprise Ltd of British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland; and Above.com Domain Privacy of Beaumaris, Australia.
The disputed domain name <tasteoffrangelico.com> is registered with Above.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2010. On May 5, 2010, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On May 10, 2010, Above.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 10, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant chose not to amend the Complaint. 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 Respondent of the Complaint, and the proceedings commenced on May 14, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 3, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 4, 2010.
The Center appointed Mark Partridge as the sole panelist in this matter on June 14, 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.
Complainant is an established trading company engaged in the manufacture and sale of spirits. One of its products is sold under the name and mark FRANGELICO in 90 countries of the world. The mark is the subject of trademark registrations in the United Kingdom and many other countries. Complainant has used that name and mark since the 1980s.
The disputed domain name was registered on November 26, 2009.
Complainant contends that it owns rights in the mark FRANGELICO; that the disputed domain name is confusingly similar to its mark; that Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and used in bad faith to disrupt Complainant's business and to reap commercial gain based on confusion with Complainant's mark.
Respondent did not reply to Complainant's contentions.
Complainant has demonstrated that it owns registered trademark rights and common law trademark rights in the mark FRANGELICO. The addition of the descriptive phrase “taste of” is insufficient to avoid confusion. In fact, given the nature of Complainant's product, the descriptive phrase is an apt reference to Complainant's product and enhances the potential for confusion.
Accordingly, the disputed domain name is confusingly similar to a mark in which Complainant has rights.
Complainant has made a prima facie showing that the registrant lacks any right or legitimate interest in the domain name. The domain name is not used for the bona fide purpose of selling related goods or services, but instead is used to direct Internet users to pay per click advertising. Respondent is not known by the domain name and is not making fair, non-commercial use of the domain name. Respondent has failed to rebut these allegations.
Therefore, the Panel concludes that Respondent lacks any right or legitimate interest in the disputed domain name.
It appears that the domain name is used to direct Internet users to pay-per-click advertising. Given the confusing similarity of the domain name to Complainant's mark and the lack of legitimate use of the domain name, combined with the fame and distinctiveness of Complainant's mark, it appears more likely than not that the domain name was registered for the purpose of trading on Complainant's goodwill.
Thus, the Panel concludes that the disputed domain name was registered and used in bad faith to derive commercial gain based on confusion with Complainant and its mark.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <tasteoffrangelico.com> be transferred to Complainant.
Dated: July 5, 2010