WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Snapple Beverage Corp. v. Telmex Management Services
Case No. D2002-0114
1. The Parties
The Complainant is Snapple Beverage Corp., a Delaware (U.S.A.) corporation with its principal place of business located at 709 Westchester Avenue, White Plains, New York 10604, United States of America. The Complainant is represented by Gary G. Lyons, Senior Vice President & General Counsel of Snapple Beverage Corp. located at 709 Westchester Avenue, White Plains, New York 10604, United States of America.
The Respondent is Telmex Management Services whose address is Pasae Estate, Road Town, Tortola, British Virgin Islands. The Respondent has not filed a Response and is not represented.
2. The Domain Name and Registrar
The domain name at issue is <snapples.com>. The domain name is registered with Intercosmos Media Group Inc., d/b/a/ directNIC.COM, 650 Poydras Street, Suite 2311, New Orleans, Louisiana 70130, United States of America. (the "Registrar").
3. Procedural History
The Complaint submitted by the Complainant was received on February 4, 2002 in hard copy by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center").
On February 7, 2002 the Respondentís representative, Helen Bradbury of Telmex Management Services, Inc. forwarded an email to the WIPO Center acknowledging receipt of the Complaint and requesting that all future correspondence be sent to the Respondent by email to the address specified by the Respondent. On February 12, 2002 the WIPO Center advised the Respondent by email that all correspondence with the WIPO Center must be copied to the other Party.
On February 8, 2002, a request for Registrar verification was transmitted by the WIPO Center to the Registrar, requesting it to:
- Confirm that a copy of the Complaint had been sent to it by the Complainant as required by WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).
- Confirm that the domain name at issue is registered with the Registrar.
- Confirm that the person identified as the Respondent, Telmex Management Services, is the current registrant of the domain name.
- Provide full contact details available in the Registrarís WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact for the domain name.
- Confirm that the Uniform Domain Name Dispute Resolution Policy ("UDRP") is in effect.
- Indicate the current status of the domain name.
By email dated February 8, 2002, the Registrar advised WIPO Center as follows:
- It had received a copy of the Complaint from the Complainant.
- It is the Registrar of the domain name registration <snapples.com>.
- The Respondent, Telmex Management Services, of Pasae Estate, Road Town, Tortola, British Virgin Islands, BVI-VG is shown as the current registrant of the domain name.
- The administrative, technical and billing contact is Antoinne Rousseau at the same address as the Respondent.
- The UDRP applies to the registration.
- The domain name registration <snapples.com> is currently Ďactiveí.
- The Registrar has currently incorporated in its agreements the policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") (hereinafter simply the "Policy").
On February 14, 2002, the WIPO Center forwarded an email to the Complainant advising that the WIPO Center had not received the Complaint in electronic format. Later on February 14, 2002, the Complainant forwarded the Complaint in electronic format to the Center.
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules for Uniform Domain Name Resolution Policy ("Rules"), on February 18, 2002 the WIPO Center transmitted by post-courier and by email a notification of the Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was also emailed to the Registrar and ICANN. The Respondent was advised that a Response to the Complaint was required within 20 calendar days. The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email.
No Response was received by the WIPO Center from the Respondent within the prescribed time. A Notification of Respondent Default was issued on March 13, 2002.
The Complainant elected to have its Complaint resolved by a single Panelist. The WIPO Center invited Mr. Ross Carson of Ogilvy Renault, Ottawa, Ontario, Canada to be the Panelist. It transmitted a statement of acceptance to Mr. Carson and requested a declaration of impartiality and independence.
The Panelist forwarded to the WIPO Center the Statement of Acceptance and an executed declaration of impartiality and independence. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.
On April 8, 2002, WIPO Center forwarded to the Panelist by courier the Complaint and submissions. In the absence of exceptional circumstances, the Panel is required to forward its decision by April 22, 2002.
4. Factual Background
(a) The Trademarks
The Complainant owns the following United States Trademarks for SNAPPLE registered since at least as early as 1981:
Reg. No. 1,156,585 for "SNAPPLE" issued 8/2/81
Reg. No. 1,326,262 for "SNAPPLE" issued 3/18/85
Reg. No. 1,741,540 for "SNAPPLE" issued 12/22/92
Reg. No. 2,031,642 for "SNAPPLE" issued 1/21/97
Reg. No. 2,122,285 for "SNAPPLE" issued 12/16/97
Reg. No. 2,304,347 for "SNAPPLE" issued 12/28/99
Reg. No. 2,416,500 for "SNAPPLE" issued 12/26/00
Copies of the Certificates of Registration are attached to the Complaint as Exhibit B.
The trademark is also registered in numerous other countries. A list of these countries is attached as Exhibit C to the Complaint.
Complainant is the Registrant of numerous domain names incorporating the word "snapple" including <snapple.com>, <snapplebeverages.com> and <snappledrinks.com>. A list of Complainants domain names is provided in paragraph V, page 5 of the Complaint.
Complainant submits that the mark SNAPPLE is among the most famous, widely-recognized and highly respected marks in the United States. Complainant commenced use of the SNAPPLE marks at least as early as the early 1970ís and, since then, has continuously used the SNAPPLE marks in commerce in the United States and 80 other countries in association with 50 different flavors of beverages. A list of Complainantís product line is attached as Exhibit D to the Complaint.
Complainant advises that it has spent millions of dollars over decades in advertising and promoting its goods under its SNAPPLE mark and has accumulated hundreds of millions of dollars from the sale of goods sold under this mark.
(b) The domain name in dispute
Respondent registered the domain name <snapples.com> on September 20, 2000.
Complainant advises that it became aware of Respondentís domain name registration for "SNAPPLES.COM" on December 31, 2001 when a Snapple consumer informed the Complainant at Complainantís <snapple.com> website of the existence of the <snapples.com> website and the fact that the site "doesnít make your company look too good" (Exhibit E to Complaint).
On January 2, 2002, while attempting to connect to <snapples.com>, Complainant was forwarded to the site <temptationsatwork.com>. The site advertised "sexetaries", "discreetly mixing pleasure with business". A print-out from said site is attached as Exhibit F to the Complaint.
On January 4, 2002, Complainant mailed a cease and desist letter (via courier and e-mail) to Respondent advising that his use of the "SNAPPLE" mark as part of the domain name <snapples.com> was unauthorized and an infringement of Complainantís rights to the SNAPPLE mark (Exhibit G).
On January 5, 2002, the Respondentís representative replied by email stating that the domain name "will point to a random website in our portfolio until such times as it has been fully developed" and that she "would be willing to see if our client would sell the domain name for $4,000 (considerably less than your fees through arbitration)" (Exhibit H).
On January 18, 2002 Complainant received a note from FedEx Express advising that the company at Respondent address refused to accept the courier copy of the cease and desist letter. FexEx Express reported "Company ask[ed] for pkg to be returned to shipper, donít accept document for this [illegible]." (See Exhibit I)
5. Partiesí Contentions
(a) The domain name <snapples.com> is confusingly similar to the SNAPPLE
marks of Complainant.
Complainant has been using the mark "SNAPPLE" on soft drinks and related goods for 30 years. In view of Complainantís brand identity, fame and good will in its trademarks built up over decades, Respondentís domain name is likely to confuse the public as to the source, sponsorship, affiliation, or endorsement of the Respondentís web site or location. Respondentís domain name <snapples.com> is identical to Complainantís mark SNAPPLE and its variations thereof, and conveys substantially the same commercial impression as the Respondentís domain name, and is so deceptively similar to Complainantís mark as to cause confusion and lead to deception as to the sponsorship of Complainantís goods. . This is of particular concern to the Complainant because visitors to Respondentís site are pointed to web sites with apparent sexual content. Respondent is, in fact, tarnishing Complainantís valuable mark. Respondentís addition of the letter "s" to its domain name does not negate a phonetic similarity that makes its domain name confusingly similar to Complainantís trademark. Under the UDRP, decisions have been rendered that the addition of one letter does not avoid confusing similarity. See In re PlanetRxx.com in which PlanetRxx.com was deemed similar to PlanetRx.Com (NAF FA0092973, PlanetRx.Com, Inc.); In re iPhones.com in which iphones.com deemed similar to iphone.com (NAF FA0094369, InfoGear Technology Corporation); In re Rowntrees.com in which Rowntrees.com deemed similar to Rowntree.com (WIPO D2001-0278, Societe des Produits Nestle SA); ); and In re Bonniers.com in which Bonniers.com deemed not clearly distinguishable from Bonnier.com (WIPO D2001-0402, Bonnier AB).
(b) Respondent has no rights or legitimate interest in the domain name <snapples.com>.
Complainant submits that Respondent is not a licensee of complainant nor otherwise authorized to use Complainantís marks. Respondentís choice of the "Snapples.com" domain cannot be arbitrary and appears to be misleadingly diverting consumers for the purpose of commercial gain.
(c) Respondent registered and is using the domain name <snapples.com> in bad faith.
Respondent registered the domain name Snapples.com, which is virtually identical to Complainantís registered trademark and without a legitimate interest, in bad faith which is evidenced by: 1) failure to select a domain name that did not infringe upon Complainantís rights; 2) offering to sell the domain name to Complainant for an exorbitant price; 3) trading off the good will of Complainantís mark, as respondentís services are not commonly known by Complainantís trademark; and 4) using the domain name for commercial gain by intentionally attracting internet users to the site by creating a likelihood of confusion with Complainantís mark.
The Respondent did not file a Response.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to"decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable".
In accordance with Paragraph 4(a) of the Policy, the Complainant has the burden of demonstrating three elements:
(i) That the Complainant has rights in a trademark or service mark with which the Respondentís Domain Name is identical or confusingly similar;
(ii) That the Respondent has no rights or legitimate interests in the Domain Name; and
(iii) That the Domain Name has been registered and is being used in bad faith.
6.1 The first issue is whether the Complainant has rights in a trademark or service mark and whether the domain name in dispute <snapples.com> is identical or confusingly similar to that mark.
Complainant is the owner of six registered trademarks for the mark SNAPPLE in the United States of America and registrations or applications for registrations in more than ninety other countries. Complainant commenced use of the trademark SNAPPLE in association with beverages at least as early as the first part of the 1970ís and since then has continuously used the SNAPPLE trademarks in the United States of America and eighty other countries. The domain name in dispute is <snapples.com>. Respondentís addition of the "s" to the Complainantís trademark does not negate phonetic similarity with Complainantís trademark.
The Panel finds that the domain name in dispute is confusingly similar or identical to Complainantís trademark.
6.2 The second matter which the Complainant must prove is that the Respondent has no rights or legitimate interest in the domain name in dispute.
Respondent did not submit a Response. Complainant submits that Respondent is not a licensee of Complainant nor otherwise authorized to use Complainantís trademark SNAPPLE. On January 2, 2002 while attempting to connect to <snapples.com> Complainant was forwarded to another website advertising promoting escort services web designers etc. (Exhibit F to the Complaint.) The Panel infers from the evidence that the Complaint has no rights or legitimate interest in the domain name in dispute and is in fact using the domain name in dispute to attract persons who misspell SNAPPLE to the website <temptationsatwork.com> promoting escort services, web designers etc.
The Panel finds that the Respondent has no rights or legitimate interests in the domain name in dispute.
6.3 The third matter which the Complainant must prove is that the domain name has been registered and is used in bad faith.
The URL <snapples.com> forwards the user to the site <temptationsatwork.com> which advertises "sexetaries", "discreetly mixing pleasure with business" offering escort services etc.
On January 4, 2002, Complainant mailed a letter to Respondent advising that his use of the "SNAPPLE" mark as part of his domain name was unauthorized and an infringement of Complainantís rights to the SNAPPLE mark. On January 5, 2002, the Respondentís representative replied stating that the domain name "will point to a random website in our portfolio until such times as it has been fully developed" and that she "would be willing to see if our client would sell the domain name for $4,000 (considerably less than your fees through arbitration)".
The trademark SNAPPLE was a very well known for two decades before the Respondent registered the domain name in dispute and continues to be a well know trademark.
When the Administrative Contact for the Registrant was served with the Complaint by e-mail at the e-mail address provided by the Registrar, a response was filed by Helen Bradbury, Senior Domain Administrator/Counsel (Exhibit H). The response stated: "We reserve all rights to the use of the domain name and have not at any time attempted to pass off as your client." The response went on to state: "The domain is not yet in use by our client, as with all the domain names we develop, it will point to a random website in our portfolio until such times as it is fully developed." As noted above the website in dispute connects to a website <temptationsatwork.com> promoting among other things maids, escort services and website design.
The person responding from the Administratorís e-mail address also stated: "Notwithstanding the above I would be willing to see if our client would sell the domain name for $4,000 (considerably less than your frees for arbitration)." Service by courier at the Registered address was not accepted. I find that the Respondent was served by e-mail with the Complaint at Respondentís administrative e-mail address. I infer from the statement "We reserve all rights to use the domain nameÖ" that the Senior Domain Administrator was representing the Respondent. I also infer from the evidence that the offer of the Senior Domain Administrator to present an offer of $4,000 to sell the domain name to the Respondent was in fact an offer from the Respondent.
I conclude that the circumstances indicate that the Registrant registered the domain name primarily for the purpose of selling the domain name registration to the Complainant who is the owner of the trademark SNAPPLE, for valuable consideration in excess of the Registrantís documented out-of-pocket costs directly related to the registration of the domain name. The activities of the Respondent correspond to evidence of registration and use in bad faith as set out in Paragraph 4(b)(i) of the Policy.
Further by directing inquiries to <snapples.com> to another website <mailto:firstname.lastname@example.org> promoting escort services, web design and other services, the panel finds that the Respondent has intentionally attempted to attract for gain internet users to other on-line locations by creating a likelihood of confusion with Complainantís mark as to source sufficient to direct an unsuspecting consumer to the Respondentís on-line location. These latter activities of the Respondent constitutes evidence of bad faith as described in Paragraph(4)(b)(iv) of the Policy.
The Panel concludes that the Respondent has registered and is using the domain name <snapples.com> in bad faith.
For the foregoing reasons, the Panel decides:
(a) That the domain name registered by the Respondent is confusingly similar to the trademark to which the Complainant has rights;
(b) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) The Respondentís domain name has been registered and is being used in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <snapples.com> be transferred to the Complainant.
Dated: April 22, 2002