WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chocoladefabriken Lindt & Sprüngli AG v. Whois Privacy Services Pty Ltd./ Damon Nelson - Manager - Quantec, LLC/ Novo Point, LLC
Case No. D2015-0311
1. The Parties
Complainant is Chocoladefabriken Lindt & Sprüngli AG of Kilchberg, Switzerland, represented by BrandIT Legal AB, Sweden.
Respondent is Damon Nelson of Dallas, Texas, United States of America, represented by Gary Schepps, United States of America/ Whois Privacy Services Pty Ltd. of Fortitude Valley, Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name <lindtcandy.com> (the "Domain Name") is registered with Fabulous.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 27, 2015.
On February 27, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 2, 2015 the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint.
The Center sent an email communication to Complainant on March 4, 2015, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint, in the form of Notice of change in registrant information, on March 4, 2015.
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 Respondent of the Complaint, and the proceedings commenced on March 12, 2015. In accordance with the Rules, paragraph 5(a), the due date for the Response was April 1, 2015.
The Center received an email communication from Respondent on April 3, 2015, requesting an extension for filing a response. The due date for the Response was extended to April 12, 2015. No formal Response has been filed with the Center.
The Center appointed Clive L. Elliott QC as the sole panelist in this matter on April 21, 2015. 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
According to Whois, the Domain Name was registered on December 11, 2004.
5. Parties' Contentions
Complainant states that it is an international manufacturer of premium chocolate, with a global presence and various subsidiaries. It is based in Switzerland and sells its chocolates around the world under its registered LINDT mark. It also owns several registrations for the word mark for LINDT as well as iterations of design marks for it internationally.
Complainant submits that as a result of the extensive use, advertising, and revenue associated with its LINDT mark worldwide, it enjoys a high degree of renown around the world, including in the United States and Australia, where it has opened eight chocolate cafés; four in Sydney and four in Melbourne.
Complainant's United States trade mark registration predates the Domain Name registration by over 90 years and the Australian by nearly 10 years. Complainant advises that it also owns various registrations for domain names that include its registered LINDT mark, including <lindt.com>, registered on December 16, 1997; <lindt.com.au>, <lindt.us>, registered on April 24, 2002, and <lindtusa.com>, registered on October 11, 2001, all of which are used to connect to a website through which it informs potential customers about its LINDT mark and its products and services. Complainant states that it has previously successfully challenged several LINDT domain names through the UDRP process.
Complainant contends that the Domain Name directly incorporates its well-known, registered trade mark LINDT, with the addition of the descriptive word "candy", which it also contends would be perceived by Internet users as descriptive of a website where they could find information about Complainant's well-known confectionaries that sell its LINDT products. The addition of the generic Top-Level Domain (gTLD) ".com" does not add any distinctiveness to the Domain Name.
Complainant argues that it has not found that Respondent is commonly known by the Domain Name, nor has Respondent provided Complainant with any evidence of its use of, or demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services.
Further, Complainant asserts that Respondent has made no effort to use the Domain Name for any purpose that might explain its choice in a manner consistent with having rights or legitimate interests in the name LINDT and that when entering the terms "LINDT or LINDT CANDY" in the Google search engine, the top returned results point to Complainant and its products. Complainant argues that Respondent could easily have performed a similar search before registering the Domain Name and would have quickly learnt that LINDT is a trade mark owned by Complainant.
Complainant asserts that the Domain Name's pay-per-click landing page contains links to advertisements that relate at least in part to a trade mark and contends that although there is nothing illegitimate in using the domain name parking service, it has been previously established that linking a domain name to such service, with a trade mark owner's name in mind, and in the hope and expectation that Internet users searching for information about the business activities of the trade mark owner will be directed to that parking service page, is a different matter and does not provide a legitimate interest in that domain name under the Policy.
Complainant submits that the current page displays pay per click links and are related to its trade mark and asserts that it is in the direct control of Respondent to disable the PPC service. Complainant notes that the links had been disabled on an ad hoc basis after Complainant contacted Respondent, but had then been enabled again.
Complainant states that it first tried to contact Respondent on December 15, 2014 through a cease and desist letter, in which Complainant advised Respondent that the unauthorized use of the LINDT trade mark within the Domain Name, coupled with the term "candy" violated Complainant's rights in said trade mark, and Complainant requested a voluntary transfer of the Domain Name. Complainant advises that a response was received the following day, which stated:
"The domain name was set up to its current page by the U.S. Federal District Court through a Federal Receiver. Once current litigation is concluded and control is released from the Federal Court's imposed page, we expect your concerns will be alleviated. When operational, the website will be clearly identified as not being operated or sponsored by your client."
Complainant requested for clarification and reminded Respondent that they were listed as the owner of the Domain Name and as such is in control of the Domain Name. No response was received and Complainant once more contacted Respondent on January 27,, 2015, and asked for a transfer of the Domain Name. The response was that they were not in control of the Domain Name and that once current litigation was concluded and control released from the Federal Court's imposed page, Respondent could then control the content. Complainant asked for proof of the litigation and was provided with a document that had no connection to the Domain Name.
After further investigations, Complainant asserts it has found similar UDRP cases which have involved the exact same arguments from the presumably same Respondent. Complainant contends it can demonstrate that it is highly likely that it is the same Respondent as in the current case based on Archive WhoIs searches. The Domain Name was initially registered in the name of Texas International Property Associates but the ownership has been masked since 2011. The facts and arguments are identical to the ones in those proceedings, namely arguing that the Domain Name was part of the Netspehere receivership. The person sending the responses has still not been able to clarify its relationship with Respondent.
Complainant asserts that as shown in the online WIPO UDRP case statistics, Respondent has been engaged in a pattern of abusive registrations, which indicates that Respondent is aware of the rules for registration of domain names, but continues to register domain names incorporating well known trade marks.
Complainant notes Respondent uses a privacy shield and submits that although use of a privacy or proxy registration service is not in itself an indication of bad faith, the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith. Complainant submits that it also suggests that a motive for using a domain privacy service in this instance has been to increase the difficulty for Complainant of identifying Respondent, which does not reflect good faith.
Complainant suggests that Respondent's purpose of registering the Domain Name is to capitalize on the reputation of Complainant's mark by diverting Internet users seeking chocolate products under Complainant's trade marks to its own website, where consumers are likely to purchase various kinds of products sold by Respondent.
No formal response was received from Respondent.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant asserts that it is a well-known international manufacturer of premium chocolate and has a well-established global presence. While Swiss based, Complainant sells its chocolates around the world under its registered LINDT mark ("Complainant's Trademark"). Complainant contends that as a result of the extensive use, advertising, and revenue associated with its LINDT mark worldwide, it has acquired a high degree of renown around the world, including in the United States and Australia, where it has opened eight chocolate cafes; four in Sydney and four in Melbourne. None of this is disputed by Respondent.
The Panel is fully satisfied that Complainant has established substantial rights in Complainant's Trademark in connection with its chocolates and chocolate cafes. In light of Complainant's assertions and lack of any denial by Respondent the Panel accepts that Complainant's Trademark is identified with Complainant and that an unrelated entity or person using a similar domain name is likely to lead to members of the public being confused and deceived.
Complainant argues that the Domain Name incorporates its well-known, registered trade mark LINDT, with the addition of the descriptive word "candy", which it says would be perceived by Internet users as descriptive of a website where they could find information about Complainant's well-known confectionaries that sell its LINDT products.
There is obvious merit in this argument and the Panel finds:
a) Complainant has rights in respect of Complainant's Trademark.
b) The Domain Name is confusingly similar to Complainant's Trademark in so far as it contains the distinctive element LINDT accompanied by the descriptive term "candy".
Accordingly, the Panel is satisfied that the first element of the Policy has been met.
B. Rights or Legitimate Interests
The question of whether Respondent has rights or legitimate interests in the Domain Name must be assessed against Complainant's significant rights such assessment taking into account the manner in which Respondent uses the Domain Name.
Complainant submits that Respondent is using the Domain Name as a landing page which contains links to advertisements that relates at least in part to a trademark and that this suggests Respondent is operating or otherwise benefiting from a pay-per-click operation or arrangement. Given the repute of Complainant's Trademark and in the absence of any explanation or attempt at rebuttal the Panel accepts that Complainant's argument is factually correct and has merit.
The Panel accepts that that Respondent appears to be using the Domain Name to attract Internet users to a landing page thereby creating a likelihood of confusion between Complainant's Trademark and goods or services offered by Respondent or an entity with which he is associated, whether directly or indirectly.
In the absence of any license or permission from Complainant to use Complainant's Trademark, no actual or contemplated bona fide or legitimate use of the Domain Name could reasonably be claimed or indeed inferred by the Panel. Under the circumstances it is difficult to see how an unauthorised pay-per-click arrangement could be characterized as legitimate and thus permissible.
On this basis the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
The Panel is satisfied that the second element of the Policy has been met.
C. Registered and Used in Bad Faith
Having reached the view that Respondent lacks any license or permission to use Complainant's Trademark and for the reasons set out above it is reasonable to infer that Respondent wishes to take advantage of Internet users who may know of or otherwise wish to purchase Complainant's well-known goods or services.
In the absence of any explanation from Respondent as to how and why it chose the Domain Name the Panel finds that it registered and used the Domain Name in bad faith. That is, so as to take advantage of Internet users who know of Complainant and its premium goods and services provided under Complainant's Trademark.
The Panel thus concludes that the third element of the Policy has been met.
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 <lindtcandy.com> be transferred to Complainant.
Clive L. Elliott QC
Date: May 13, 2015