WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société des Produits Nestlé S.A. v. Got Chocolates, Inc.
Case No. D2013-1613
1. The Parties
The Complainant is Société des Produits Nestlé S.A. of Vevey, Switzerland, represented by Studio Barbero, Italy.
The Respondent is Got Chocolates, Inc. of East Islip, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <wonkachocolates.com> is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 12, 2013. On September 13, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 13, 2013, the Registrar 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 September 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 8, 2013.
Upon the Complainant’s request, the proceeding was suspended on September 25, 2013 until October 18, 2013. On October 16, 2013, the Center received the Complainant’s request for re-institution of the proceeding. On the same day, the Center confirmed that the proceeding had been re-instituted and the due date for filing a Response was October 29, 2013 accordingly. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 30, 2013.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on November 4, 2013. 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 the owner of several national and international trademark registrations for WONKA (Annexes 3.1 through 3.5 to the Complaint) amongst which the United States Trademark Registration No. 2,642,856 for the word WONKA, filed on February 19, 2002 and registered on October 29, 2002, claiming first use as of February 19, 1998, covering goods including chocolate and candy in International class 30.
The Complainant is a wholly owned company of Nestlé S.A., a Swiss limited liability company founded in 1866 which currently has over 283,000 employees worldwide and markets its products in over 200 countries. It is the world’s largest food consumer products company in terms of sales and the 71st largest company according to the 2012 edition of the “Fortune Global 500” ranking of the world’s 500 largest companies (Annex 4 to the Complaint).
The disputed domain name <wonkachocolates.com> was registered on September 28, 2003 and is currently resolving to a webpage selling chocolates, candies, cookies, cakes and other sweets.
5. Parties’ Contentions
The Complainant claims to have, since 1971, through its exclusive licensee Nestlé USA, Inc. and their predecessors, been continuously using the trademark WONKA in connection with chocolate and other candy products in the United States, where the Respondent is based.
Moreover, the Complainant contends that in connection with the Wonka products the GOLDEN TICKET trademark has been used for many years and consumers identify chocolate and candy products that bear a reference to GOLDEN TICKET to the Wonka brand as originating from Nestlé.
The Complainant asserts that the Respondent is selling both original and counterfeit Wonka bars on its websites (Annex 7 to the Complaint).
The Complainant states that on January 7, 2008, an email communication was sent to the Respondent requesting it to refrain from further using the WONKA trademarks. The Respondent replied on the same day indicating that it was manufacturing Wonka bars “out of nestles chocolate as a way to promote the store” and that it was exploring the possibility to make the official Wonka bars (Annex 9 to the Complaint).
Subsequent communications took place on January 11, 2008 in which the Respondent stated that “this weekend I am removing the wonka bars I have on my web site and replacing them with yours and all NON nestles candy will be removed and [I’]ll be adding MORE wonka nestles products during the week, I will also put larger that these are ALL part of the family of nestles products”.
On January 14, 2008, the Respondent confirmed that it was “going to clean up things on this end, change the sign, faze out of wonkachocolates etc.” (Annex 9.6 to the Complaint).
The Complainant further states that in October 2012, Nestlé USA, Inc. verified that the Respondent had recommenced its use of the WONKA trademark, by selling prima facie counterfeit Wonka bars and made-to-order candy and labels (not authorized by the Complainant) displaying the WONKA trademark. A new cease and desist letter was sent to the Respondent on June 3, 2013, requesting the cease of any use and the transfer of the disputed domain name (Annex 10 to the Complaint). The Respondent did not reply to such communication and continued to infringe the WONKA trademark.
On July 15, 2013, the Respondent sent a letter to the Complainant, addressed to the “Board of Directors”, admitting that it had no right to use the WONKA trademark but seeking a license to use it and making a commercial proposal to produce Wonka bars for the Complainant (Annex 11 to the Compliant).
The Complainant therefore claims that the disputed domain name is confusingly similar to its WONKA trademark given that the term “chocolates” is particularly apt to increase the likelihood of confusion and to induce Internet users to believe that there is an association between the Complainant and the disputed domain name.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name given that:
a) the Respondent is not affiliated with the Complainant in any way nor has it been authorized by the Complainant to register and use the WONKA trademark in the disputed domain name;
b) there is no evidence tending to demonstrate that the Respondent is commonly known by the disputed domain name as an individual, business or organization;
c) the disputed domain name resolves to a webpage where counterfeit products are being sold; and
d) the Respondent has not demonstrated use or preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
As to the registration of the disputed domain name in bad faith the Complainant asserts that it is implausible that the Respondent would be unaware of the Complainant’s trademark at the time of the registration of the disputed domain name given both the fame of its WONKA trademark as well as to the evidenced actual knowledge of the Complainant’s mark through the correspondence exchanged between the parties.
Lastly, in light of the sale of counterfeit products as well as of the contents of the website to which the disputed domain name resolves, where the Complainant’s trademarks are featured prominently and no disclaimer as to the non affiliation of the website with the Complainant is made, the Complainant asserts that the Respondent is misleading Internet users as to the source or affiliation of the disputed domain name and the Complainant.
The Respondent did not reply to the Complainant’s contentions. On September 24, 2013 the Respondent sent an email message to the Complainant only stating that:
“I keep telling everyone they can have the website, I don’t even use it. I don’t know how to transfer it to another person so if you can please tell me how to do it.
I have received over 20 emails do this effect. I DO NOT WANT OR NEED the ‘www.wonkachocolates.com’ website.”
The transfer of the disputed domain name did not take place and the procedure was re-instituted. No further communication was received from the Respondent.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Complainant has established rights in the WONKA trademark duly registered in the country where the Respondent is domiciled as well as in several countries around the world (Annexes 3.1 through 3.5 to the Complaint).
The addition of the generic term “chocolates” only makes the disputed domain name even more similar to the Complainant’s trademark, creating a high risk of association by Internet users.
Therefore the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. The first element of the Policy has been established.
B. Rights or Legitimate Interests
In view of the Respondent’s express recognition of its lack of rights or legitimate interests in the disputed domain name, not opposing to its transfer, in addition to the circumstances that clearly indicate that the Respondent indeed lacked rights or legitimate interests in the disputed domain name (lack of affiliation or authorization to use the WONKA trademark; evident knowledge of the Complainant’s rights over its trademark and use of the disputed domain name to sell counterfeit products), this Panel concludes that the second element of the Policy has also been met.
C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) of the Policy that bad faith registration and use can be found in respect of the domain name, where a respondent has intentionally attempted to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, in light of the sale of counterfeit products as well as of the contents of the website to which the disputed domain name resolves, where the Complainant’s trademarks are featured prominently and no disclaimer as to the non affiliation of the website with the Complainant is made, both the registration and use of the disputed domain name in bad faith can be found since Respondent is misleading Internet users for commercial gain by profiting from the confusing similarity between the disputed domain name and the Complainant’s mark.
The above in this Panel’s view constitutes an attempt to profit from the fame and goodwill associated with the Complainant’s famous trademark and therefore evidences bad faith.
For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name pursuant to paragraph 4(b)(iv) of the Policy.
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 <wonkachocolates.com> be transferred to the Complainant.
Wilson Pinheiro Jabur
Date: November 13, 2013