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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Perfetti Van Melle SpA v. The Lamp Outlet

Case No. D2011-0565

1. The Parties

The Complainant is Perfetti Van Melle SpA of Lainate (MI), Italy, represented by Perfetti Van Melle S.p.A., Italy.

The Respondent is The Lamp Outlet of Bono, Arkansas, United States of America.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 29, 2011. On March 29, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On March 30, 2011, GoDaddy.com, Inc. 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 1, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 21, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 26, 2011.

The Center appointed Enrique Ochoa de González Argüelles as the sole panelist in this matter on April 29, 2011. 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.

On April 29, 2011, Respondent sent an e-mail to the WIPO Arbitration and Mediation Center setting forth the following:

“Hi […], I am sorry... due to an overzealous spam folder, your notifications have not been received up to this point... just automatically deleted. We would be more than happy to transfer the domain, but it seems it is now locked and cannot be deleted or transferred. Any suggestions for taking care of this would be most appreciated. Thanks”

On May 2, 2011, the WIPO Arbitration and Mediation Center acknowledged receipt of said communication, also copying the Complainant, including the Respondent’s preceding communication.

4. Factual Background

Complainant is the owner of many trademark registrations and applications for CHUPA CHUPS word and/or device, covering products of different international classes but used in particular on lollipops in different countries of Europe and in the United States of America since 1964.

CHUPA CHUPS has been used on lollipops since 1958 in Spain and nowadays CHUPA CHUPS products are widely advertised and sold successfully all round the world.

Complainant’s web site “www.chupachups.com” is specifically dedicated to CHUPA CHUPS and it illustrates the relating history, products, promotions and licenses.

The disputed domain name was registered on November 6, 2010.

5. Parties’ Contentions

A. Complainant

Complainant contends that:

The disputed domain name is identical or confusingly similar to the Complainant’s trademarks.

Respondent’s domain name consists of the words “chupa chups” (exactly the same fancy expression protected by the Complainant’s trademark registrations) and the common English term “store”, which has no power to differentiate the domain name from the trademark. On the contrary, the association of “chupachups” with the word “store” in the domain name suggests to people searching the Internet that the relating web site may be a virtual shop where the Complainant’s products CHUPA CHUPS can be bought.

Respondent has not been commonly known by the domain name subject of this Complaint.

Respondent has no rights based upon tradition or legitimate prior use of the name chosen for their domain name.

Respondent is making neither a legitimate non-commercial or fair use of the domain name nor a bona fide offering of goods or services.

Respondent has never approached the Complainant to inform of their intention to register the challenged domain name or to ask for consent to its registration.

B. Respondent

The Respondent did not reply to the Complainant’s contentions, their only reply being the above-mentioned e-mail communication indicating apparent consent to transfer the disputed domain name.

6. Discussion and Findings

This Panel considers that Respondent by registering the disputed domain name agreed to comply with the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) and the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), as well as the GoDaddy Domain Name Registration Agreement.

In terms of paragraph 10 of the Rules, the Panel has the discretion to conduct the proceeding in such manner as it deems convenient and the authority to proceed immediately to make an order for transfer given that Respondent has already agreed on the transfer of the disputed domain name, as set forth above.

Consequently, the Panel does not consider it necessary, in the present case, to review the facts supporting the claim since a genuine unilateral consent to transfer by the Respondent provides a basis for an immediate order to transfer without consideration of the paragraph 4(a) elements. (See e.g. Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207 and Universidad Autónoma de Nuevo León v. Flex Media Inc., WIPO Case No. DMX2010-0014, and other prior decisions to similar effect cited in paragraph 4.13 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition “WIPO Overview, 2.0”).

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 domain name <chupachupsstore.com> be transferred to the Complainant.

Enrique Ochoa de González Argüelles
Sole Panelist
Dated: May 13, 2011

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