World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hickory Farms, Inc. v. Registration Private / Mihnea Constantin

Case No. D2011-2178

1. The Parties

The Complainant is Hickory Farms, Inc. of Maumee, Ohio, United States of America, represented by Ladas & Parry, United States of America.

The Respondent is Registration Private of Scottsdale, Arizona, United States / Mihnea Constantin of Bacau, Romania.

2. The Domain Name and Registrar

The disputed domain name <hickoryfarmscouponcodes.info> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) against Registration Private on December 9, 2011. On December 12, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On December 13, 2011, GoDaddy.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 the Complainant on December 14, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 14, 2011.

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”).

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 December 16, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 5, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 12, 2012.

The Center appointed Torsten Bettinger as the sole panelist in this matter on January 12, 2012. 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

The Complainant is a specialty retailer focused on the gourmet food and gifts industry. The Complainant produces gift-wrapped and packaged food items for holiday occasions, and has used its HICKORY FARMS trademark in connection with its goods and services since as early as 1952. The Complainant obtained registration for its HICKORY FARMS trademark in 1986, and has since registered a number of related “family” trademarks which it also uses in connection with its business.

According to the publicly available WhoIs database, the disputed domain name <hickoryfarmscouponcodes.info> was registered on April 20, 2011. It has been used in connection with a landing page advertising “Hickory Farms Coupons”. The webpage to which the disputed domain name resolves provided a rather lengthy exposition of the Complainant’s corporate history, as well as a statement indicating that coupons for the Complainant’s goods could be claimed by clicking on a large square icon reminiscent of an old-fashioned paper coupon. When an Internet user clicked on the image, however, he or she was redirected to a webpage at <smartshopperrewards.com>, which offered “$1000 to shop for groceries” at the store of the visitor’s choice.

The Respondent has not filed any Response in this matter, and did not elect to reply to the Complainant’s cease-and-desist letter of June 14, 2011. The disputed domain name currently resolves to a static landing page which displays the text “NO LONGER AVAILABLE”.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy has been satisfied.

With regard to the first element of the Policy, the Complainant states that the disputed domain name <hickoryfarmscouponcodes.info> is confusingly similar to its registered trademark HICKORY FARMS, and that the addition of the gTLD “.info” and the dictionary terms “coupons” and “codes” do not dispel such similarity.

Concerning the second element of the Policy, the Complainant affirms that it has not licensed or otherwise authorized the Respondent to use its trademarks in any fashion, and that the Respondent has no connection to the Complainant or its business. The Complainant notes that extensive background information about its company was formerly posted on webpage at the disputed domain name, which the Complainant argues is evidence of the Respondent’s attempt to deceive Internet users as to the source or sponsorship of its webpage. The Complainant contends that the Respondent is not making a bona fide commercial use, or a noncommercial or fair use, of the disputed domain name. Finally, the Complainant alleges that the webpage to which the Respondent’s coupon advertisement clicked-through collects personal data from Internet users, and as such constitutes a phishing or pharming webpage.

Finally, concerning the third element of the Policy, the Complainant alleges that the Respondent has registered and used the disputed domain name in bad faith in an attempt to deceive Internet users as to the source or sponsorship of the Respondent’s webpage, and to exploit such apparent connection for commercial gain.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors usually considered in trademark infringement. See F. Hoffmann-La Roche AG v. P Martin, WIPO Case No. D2009-0323; BWT Brands, Inc and British American Tobacco (Brands), Inc v. NABR, WIPO Case No. D2001-1480.

The addition of a dictionary word or term which is descriptive of a complainant’s goods or services will not generally serve to distinguish a respondent’s domain name from the relevant trademark. See Revlon Consumer Products Corporation v. Vladimir Sangco, WIPO Case No. D2010-1774; Viacom International Inc. v. Transure Enterprise Ltd., WIPO Case No. D2009-1616; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110. In this case, the descriptive terms “coupon” and “codes” have been appended to the Complainant’s registered HICKORY FARMS trademark, which may serve to heighten Internet user confusion as the Complainant is engaged in a retail business.

Finally, it is well established by UDRP panels that a gTLD suffix, such as “.info”, is generally held to be irrelevant for the purposes of determining identity or confusing similarity under the Policy. See Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.

The Panel thus finds that the disputed domain name <hickoryfarmscouponcodes.info> is confusingly similar to the Complainant's HICKORY FARMS trademark and that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. However, it is the consensus view among UDRP panelists that if the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may lack a legitimate interest in the domain name. See Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.

In this case, the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant confirms that it has not licensed or authorized the Respondent to use its HICKORY FARMS trademark in any fashion, that it has not permitted the Respondent to issue coupons for the Complainant’s goods, and that there is no connection between the Respondent and the Complainant. There is no evidence on the present record, or in the publicly available WhoIs database, to indicate that the Respondent is commonly known by the disputed domain name or a name corresponding to the disputed domain name. Additionally, as it would appear the Respondent has realized commercial gain from its webpage at the disputed domain name, through pay-per-click revenue or otherwise, the Respondent’s use of the disputed domain name neither constitutes a bona fide offering of goods or services nor a legitimate noncommercial or fair use.

Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) is also satisfied.

C. Registered and Used in Bad Faith

The Complainant has demonstrated that its HICKORY FARMS trademark is widely recognized in connection with gourmet food gift items, and that said trademark was registered for a substantial period of time prior to the creation of the disputed domain name. Additionally, the Respondent’s inclusion of a long section of background text outlining the Complainant’s corporate history indicates that the Respondent was fully aware of the Complainant and its trademarks when registering the disputed domain name.

By fully incorporating the HICKORY FARMS trademark in the disputed domain name, in connection with the words “coupon” and “codes”, the Respondent was clearly attempting to attract Internet users to its site who were seeking the Complainant’s goods and services. By connecting its webpage via a click-through link to a third-party site, the Respondent was, in all probability, seeking commercial gain by creating a likelihood of confusion with the Complainant’s trademarks. Such use constitutes bad faith under paragraph 4(b)(iv) of the Policy. See F. Hoffmann-La Roche AG v. DOMIBOT, WIPO Case No. D2006-0327.

The Panel thus finds it unnecessary to reach the Complainant’s assertions regarding the phishing or pharming activities allegedly being carried out at the third-party website to which the click-through “coupon” link redirected. The Panel notes in this regard that insufficient evidence has been produced on the record to make a finding on this issue, but in light of the above facts and circumstances it is, in any event, unnecessary to the final outcome of the case.

The Panel therefore concludes that the requirements of paragraph 4(a)(iii) of the Policy have also been met.

7. Decision

For 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 <hickoryfarmscouponcodes.info> be transferred to the Complainant.

Torsten Bettinger
Sole Panelist
Dated: January 21, 2012

 

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