WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Perfetti Van Melle SpA v. Dopici Nasrat / Domain Admin - PrivacyProtect.org
Case No. D2010-0886
1. The Parties
1.1 The Complainant is Perfetti Van Melle S.p.A. a company based in Lainate, Italy (the “Complainant”) and represented internally.
1.2 The Respondent is Dopici Nasrat/Domain Admin –Privacy Protect.org of Vavau in Tonga (“the Respondent”).
2. The Domain Name and Registrar
2.1 The disputed domain name <chupachups-landia.com> (the “disputed Domain Name”) is registered with Directi Internet Solutions PVT. Ltd D/B/A PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2010. On June 1, 2010 the Center transmitted by email to Directi Internet Solutions PVT.Ltd.D/B/A PublicDomainRegistry a request for registrar verification in connection with the disputed Domain name. On June 7, 2010, Directi Internet Solutions Pvt. Ltd. D/B/A PublicDomainRegistry.com. 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 the Complainant on June 7, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.
3.2 The Complainant filed an amendment to the Complaint on June 8, 2010. The Center verified that the Complaint together with the amendment to 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”).
3.3 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 June 14, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 4, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 5, 2010.
3.4 The Center appointed Ike Ehiribe as the sole panelist in this matter on July 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.
4. Factual Background
4.1 The Complainant Perfetti Van Melle S.p.A., a company based in Italy is the owner of several trademark registrations and applications for the CHUPACHUPS word, mark or device covering products of different international classes but used in particular on lollipops. The CHUPA CHUPS mark has been used on lollipops in Spain since 1958 and the Complainant registered the trademark since 1964. The Complainant continues to advertise and sell Chupachups products successfully all around the world.
4.2 The Respondent according to the WhoIs database created the disputed Domain Name <chupachups-landia.com> on August 25, 2009.
5. Parties' Contentions
5.1 The Complainant contends that the disputed Domain Name <chupachups-landia.com> is confusingly similar to the Complainant's duly registered trademark CHUPA CHUPS, in so far as the disputed Domain Name consists of the words chupa chups. The Complainant further contends that the addition of the word “Landia” and or a hyphen between the words CHUPA CHUPS and “Landia” does nothing to distinguish the Complainant's trademark from the disputed Domain Name.
5.2 The Complainant asserts that the association of CHUPA CHUPS with “Landia” in the disputed Domain Name will suggest to Internet visitors that the relating website could disclose information on the Complainant's products bearing the trademark CHUPA CHUPS.
5.3 The Complainant submits that the Respondent has not been commonly known by the disputed Domain Name, and to its knowledge, the Respondent has no known rights based upon tradition or legitimate prior use of the name chosen for the disputed Domain Name, therefore, the Respondent has no rights or legitimate interests in respect of the disputed Domain Name.
5.4 The Complainant further submits that the Respondent is illegitimately exploiting the worldwide fame of CHUPA CHUPS products to attract Internet visitors to their web page without bearing any of the advertising or promotional costs usually borne by the Complainant. The Complainant further asserts that it is indeed strange that the Respondent's chose the words CHUPA CHUPS for its domain name, words identical to the Complainant's trademark, bearing in mind that CHUPA CHUPS is a worldwide famous brand name.
5.5 With regards to registration and use in bad faith, the Complainant submits that the Respondent has never approached the Complainant to inform of the intention to register the disputed Domain Name or to ask for consent to its registration which they ought to have done if there was an intention to use the disputed Domain Name in good faith. The Complainant contends further that the Respondent could not be unaware of the existence of the Complainant's products as a simple search among international trademarks would easily disclose the existence of the Complainant's registrations for CHUPA CHUPS.
5.6 The Complainant also contends that an inexperienced person would have noticed from the number of trademark registrations displayed by a simple search that CHUPA CHUPS is a used trademark. The Complainant argues further that since the Respondent has registered a domain name, the Respondent must be familiar with the use of the Internet; therefore, a search with Google or any other search engine would have shown the Respondent that CHUPA CHUPS is a brand used for confectionery products which are widely advertised and used.
5.7 Finally, the Complainant asserts that the Respondent's bad faith is further proved by the fact that the list of sponsored searches displayed under the disputed Domain Name comprises of exactly the products that the Complainant sells under the CHUPA CHUPS trademark, that is lollipops, and most of the web links forward to products of competitors of the Complainant.
5.8 The Complainant requests a decision that the disputed Domain Name be transferred to the Complainant.
5.9 The Respondent did not reply to the Complainant's contentions and is in default. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel shall draw such inferences as it deems appropriate from the Respondent's default.
6. Discussion and Findings
6.1 Under paragraph 4(a) of the Policy, to succeed in these administrative proceedings the Complainant must prove: (i) that the disputed Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name; and (iii) that the disputed Domain Name has been registered and is being used in bad faith.
6.2 As expressly stated in the Policy, the Complainant must establish the existence of each of these three elements in the proceedings.
A. Identical or Confusingly Similar
6.3 The Panel finds on the facts as submitted by the Complainant and unchallenged by the Respondent that the disputed Domain Name <chupachups-landia.com> is confusingly similar to the worldwide known trademark CHUPA CHUPS owned exclusively by the Complainant. It is abundantly clear to this Panel that the disputed Domain Name incorporates entirely the Complainant's trademark. This Panel also agrees with the Complainant's contention that the addition of the word “Landia” and or the insertion of a hyphen between the word “Landia” and the word mark CHUPA CHUPS does not in any way sufficiently distinguish the disputed Domain Name from the Complainant's trademark.
6.4 The Panel in support of the finding above relies on the decision of F. Hoffmann-La Roche AG v. PrivacyProtect.org Domain Admin and Mark Sergijenko, WIPO Case No. D2007-1854 where it was held that the addition of other descriptive or non descriptive words to a complainant's trademark by a user of that trademark does not enable that user to avoid the likely confusion arising from appropriating entirely the complainant's trademark.
6.5 Accordingly, the Panel finds that the Complainant has established that the disputed Domain Name is confusingly similar to the Complainant's trademark in accordance with paragraph 4(a)(i) of the UDRP Policy.
B. Rights or Legitimate Interests
6.6 The Panel finds that the Respondent is unable or has failed to provide any evidence or circumstances to establish that it has rights or legitimate interests in the disputed Domain Name within the ambit of paragraph 4(c) of the Policy. The Panel is satisfied, as the Complainant contends, that the Respondent registered the disputed Domain Name with the intention of exploiting the worldwide fame of the Complainant's trademark; without bearing the huge costs of advertising borne by the Complainant over the past years said to be around USD 16.065.000 in the year 2009.
6.7 The Panel finds also in view of the Panel's findings below, that the Respondent's silence and failure to submit a Response to the Complaint concerning the likelihood of confusion in the minds of Internet visitors demonstrates that the Respondent's interests cannot have been legitimate at any point in time.
6.8 Accordingly, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.9 On the question of bad faith registration and use, the Panel finds that the Respondent undoubtedly, registered the disputed Domain Name in bad faith. The Panel has taken into account a number of factors in arriving at the conclusion. In the first instance, the Panel finds that the Respondent knew or ought to have known that the Complainant held rights in the trademark CHUPA CHUPS. As the Complainant asserts, apart from conducting a simple search of international trademarks which the Respondent could have conducted but failed to do, this information is available in the public domain as evidenced by entries in the free Internet encyclopaedia Wikipedia set out in Annex 7 and search results from Google also set out in Annex 9.
6.10 Secondly, the Panel finds as a fact that the Respondent only registered the disputed Domain Name for the sole reason of seeking to exploit for material gain the confusion arising from the similarity between the Complainant's trademark and the disputed Domain Name. The Panel in this regard relies on the decision in Mastercard International Incorporated v. Unicorn Multi-Media, Inc, WIPO Case No. D2007-0688 where the panel in that case found bad faith registration and use clearly established due to no other reason but the respondent's intention to profit from confusion arising from similarity between the trademark and disputed domain name in that case.
6.11 Thirdly, this Panel as earlier indicated has drawn adverse inferences from the failure of the Respondent to respond to the Complaint in these proceedings as further evidence of bad faith registration and use. In support of this finding the Panel places reliance on other cases involving the Complainant where the panels made similar findings of bad faith registration and use, where, as in this case, the respondent failed to respond to the complainants with respect to registering domain names which wholly or substantially incorporate the trademark of the Complainant. See in this regard: Perfetti Van Melle S.p.A v. DomainPrivacyGuard.com 3686459, WIPO Case No. D2009-1213 and Perfetti Van Melle Spa v. Zine Z James, WIPO Case No. D2010-0507.
6.12 The Panel therefore finds that the Complainant has established the finding of bad faith use and registration within the ambit of paragraph 4(b)(iv) of the Policy.
7.1 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 <chupachups-landia.com> be transferred to the Complainant forthwith.
Dated: July 28, 2010