WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Perfetti Van Melle SpA v. Domains By Proxy, LLC/ Massimo Gallo
Case No. D2014-0524
1. The Parties
The Complainant is Perfetti Van Melle SpA of Lainate, Italy, represented internally.
The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States of America/ Massimo Gallo of Milan, Italy.
2. The Domain Name and Registrar
The disputed domain name <ciupaciupa.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2014. On April 1, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 2, 2014, the Registrar 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 April 3, 2014 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 April 3, 2014.
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 April 7, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 27, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 7, 2014.
The Center appointed Anna Carabelli as the sole panelist in this matter on May 9, 2014. 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 in the business of producing, marketing and selling confectionary products. In particular the Complainant manufactures and sells lollipops under the mark CHUPA CHUPS.
The mark is protected as a registered trademark in Italy and in many other countries; annexed to the Complaint are copies of several national, international and community trademark registrations and a list of other trademark registrations for CHUPA CHUPS owned by the Complainant.
CHUPA CHUPS has been used on lollipops since 1958 in Spain and nowadays CHUPA CHUPS products are widely advertised and sold by the Complainant all around the world. Annexed to the Complaint are printouts of the Complainant’s website “www.chupachups.com” illustrating CHUPA CHUPS products and advertisements, and the Wikipedia entry for CHUPA CHUPS.
The Respondent’s disputed domain name <ciupaciupa.com> was registered on May 13, 2013 as shown by a copy of the Registrar’s WhoIs database annexed to the Complaint.
According to the evidence submitted by the Complainant, the disputed domain name previously resolved to a website about escorts, mistresses and other related subjects, and featured explicit pornographic imagery. The Panel notes that the disputed domain name presently directs users to a temporary webpage offered by GoDaddy, featuring various sponsored links and showing the message “Benvenuti: ciupaciupa.com. Questa pagina web temporanea é gratuita, offerta da GoDaddy.com” (“Welcome: ciupaciupa.com. This temporary webpage is free, offered by GoDaddy.com”).
On December 12, 2013 and on January 27, 2014, the Complainant requested the Respondent to cease and desist from further use of the disputed domain name but the Respondent did not respond.
5. Parties’ Contentions
The Complainant contends that:
- the Complainant’s trademark CHUPA CHUPS is a distinctive mark which enjoys a worldwide reputation and which has been used for over 50 years in connection with lollipops and confectionary products;
- the disputed domain name is confusingly similar with and almost identical to the Complainant’s registered trademark, since it (i) corresponds to how the trademark CHUPA CHUPS is commonly and generally pronounced by consumers all around the world, and (ii) consists of a spelling variation thereof;
- the Respondent has no rights or legitimate interests in respect of the disputed domain name since it is not commonly known by it and has never been licensed or permitted to use it. Moreover the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
- The Respondent is using the disputed domain name in connection with a website for adults with explicit pornographic content;
- The disputed domain name was registered and is being used in bad faith;
- Given the worldwide reputation of the Complainant’s trademark CHUPA CHUPS, the Respondent could not have been unaware when registering the disputed domain name of the risk that Internet users would be misled into assuming the existence of a link between the Complainant and the disputed domain name;
The Respondent is using the disputed domain name to attract Internet users to a pornographic web page and to disrupt and tarnish the Complainant’s business and good reputation. In this connection the Complainant stresses that since its creation, the trademark CHUPA CHUPS has been used for lollipops and candies and target to children and young people.
Based on the above the Complainant requests the cancellation of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) The disputed domain name is identical or confusingly similar to the Complainant’s trademark or service mark; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4(a)(iii) shall be evidence of registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by the Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the disputed domain name for the purpose of paragraph 4(a)(ii) above.
A. Identical or Confusingly Similar
Normally, the assessment of whether a domain name and a trademark are confusingly similar would involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) paragraph 1.2). Here, however, the Panel also takes note of the distinctiveness of the Complainant’s trademark CHUPA CHUPS, which is commonly associated with the Complainant’s activities as a confectionary products manufacturer.
The disputed domain name <ciupaciupa> is confusingly similar with the Complainant’s registered trademark CHUPA CHUPS, since it consists of a spelling variation thereof corresponding to how the Complainant’s trademark is commonly pronounced by consumers. The Panel further notices that the Complainant’s trademark is well-known and therefore Internet users finding <ciupaciupa.com> on search engines or elsewhere are likely to be led to believe that the Complainant is the registrant or is otherwise associated with the disputed domain name; or, if not misled, they are at least likely to be confused into wondering whether this is so.
Accordingly, in the absence of any argument to the contrary, the Panel finds that the Complainant has established element 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has not authorized, licensed or permitted the Respondent to use the trademarks CHUPA CHUPS.
The Complainant asserts that the Respondent is not commonly known by the disputed domain name and cannot demonstrate any legitimate noncommercial or fair use of the disputed domain name, particularly because the Respondent is using the disputed domain name in connection with a website featuring explicit pornographic content. This cannot be deemed a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy, and reveals an intent to tarnish the reputation of the Complainant’s well-known trademark and to trade off the Complainant’s worldwide goodwill (e.g., National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net, WIPO Case No. D2000-0118; Libro AG v. NA Global Link Limited, WIPO Case No. D2000-0186; Women in Military Service for America Memorial Foundation, Inc. v. Russian Web Marketing, WIPO Case No. D2001-0610).
In light of the above, the Complainant has established a prima facie case that none of the three circumstances establishing rights or legitimate interests mentioned under paragraph 4(c) of the Policy apply here. As stressed by many UDRP decisions, in such a case the burden of production shifts to the Respondent to rebut the evidence (see among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).
Because the Respondent failed to submit an answer to the Complaint, and given that the allegations in the Complaint prima facie do not raise substantial doubts, the Panel finds that the Complainant has established element 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Given the reputation of the CHUPA CHUPS trademark, the Panel finds that in all likelihood the Respondent was aware of the Complainant’s well-known trademark at the time it registered the disputed domain name. Based on the above, the Panel agrees that the Respondent registered the disputed domain name in bad faith.
The evidence shows that the disputed domain name has been used by the Respondent in connection with a website for adults with explicit pornographic content.
By registering and using the disputed domain name, which phonetically and visually recalls the Complainant’s trademark, the Respondent has created a likelihood of confusion with respect to this mark to intentionally attract for commercial gain Internet users to the website “www.ciupaciupa.com” by trading on the goodwill associated with the CHUPA CHUPS mark. In addition the use of the disputed domain name in connection with a website featuring explicit pornographic content must be held to be registration and use in bad faith. Several decisions under the Policy have held that use of another’s mark in a domain name for a pornographic website reflects bad faith. (See, e.g., Arizona Board of Regents for and on behalf of Arizona State University v. Value Holdings, Inc., WIPO Case No. D2001-0445; Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102; National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net, supra).
The fact that the Respondent’s web site resolved to a GoDaddy holding page when the decision was drafted does not affect the above conclusions. It is an established principle that the lack of active use of a domain name does not as such prevent a finding of bad faith. The Panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith and in the Panel’s view the circumstances of the present case (namely: strong reputation and distinctiveness of the Complainant’s trademarks and goods, no response to the Complaint, the impossibility of conceiving a good faith use of the disputed domain name) clearly show the Respondent’s bad faith.
Accordingly the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith.
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 <ciupaciupa.com> be cancelled.
Date: May 22, 2014