WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chocoladefabriken Lindt & Sprüngli AG v. Contact Privacy Inc. Customer 0137742104 / ICS INC.
Case No. D2015-0625
1. The Parties
The Complainant is Chocoladefabriken Lindt & Sprüngli AG of Kilchberg, Switzerland, represented by BrandIT Legal AB, Sweden.
The Respondent is Contact Privacy Inc. Customer 0137742104 of Toronto, Ontario, Canada / ICS INC. of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
2. The Domain Name and Registrar
The disputed domain name <lindortruffles.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2015. On April 8, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 8, 2015, 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 13, 2015 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 13, 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 the Respondent of the Complaint, and the proceedings commenced on April 14, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 4, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 5, 2015.
The Center appointed Stefan Abel as the sole panelist in this matter on May 8, 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
The Complainant is a well-known Swiss company and a major international manufacturer of premium chocolate with various subsidiaries around the world. The Complainant sells its chocolates under the word trademark LINDOR. The trademark LINDOR is registered in many countries since many years. In particular, the Complainant owns the international word trademark no. 145636 LINDOR, registered in 1950, covering chocolate and confectionary goods and designating over 30 countries. Further, the Complainant owns the Canadian national word trademark no. TMA46871 LINDOR, registered in 1997 for pralines, claiming use as of November 1, 1977. The Complainant also owns, in particular, the domain names <lindor.com> and <lindor.ca>.
The disputed domain name was initially created in 2005. The Respondent’s site at the disputed domain name contains a number of links to various commercial websites, including links related to the Complainant. Further, the disputed domain name is listed for sale on the website “www.afternic.com”.
5. Parties’ Contentions
In summary, the Complainant’s contentions are as follows:
The disputed domain name is confusingly similar to the Complainant’s LINDOR trademarks. It incorporates the Complainant’s LINDOR trademark and merely adds the descriptive word “truffles”. The added word is perceived by Internet users as descriptive of a website where they could find information about the Complainant’s well-known confectionaries. The addition of the generic Top-Level Domain “.com” does not add any distinctiveness to the disputed domain name.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not found that the Respondent is commonly known by the disputed domain name. There is no evidence that the Respondent has a history of using, or preparing to use, the disputed domain name or registered business names corresponding to the disputed domain name in connection with a bona fide offering of goods and services.
The Respondent registered and is using the disputed domain name in bad faith. The Complainant has not received any reply by the Respondent to its cease-and-desist letter and subsequent correspondence trying to solve the matter amicably. The disputed domain name was registered using a privacy or proxy registration service shielding the disputed domain name owner’s identity. By using the disputed domain name for its website, the Respondent seeks to capitalize on the reputation of Complainant’s mark by diverting Internet users seeking chocolate products under the Complainant’s trademark to its own website.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Policy provides for a transfer or cancellation of the disputed domain name if the Complainant establishes each of the following elements set out in paragraph 4(a) of the Policy:
(i) the Respondent’s 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.
Paragraph 4(b) of the Policy sets out certain circumstances which, in particular, but without limitation, shall be evidence of registration and use of the domain name in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark LINDOR.
The disputed domain name consists of this distinctive trademark in combination with the term “truffles”. The Panel finds that this generic term, when preceded by the Complainant’s intensively used chocolate trademark, is perceived by the public as a descriptive element indicating ingredients or the flavor of a chocolate. The term “truffles” added to the element “lindor” in the disputed domain name therefore does not add any distinctive character with regard to the mark owned by the Complainant but reinforces the confusing similarity of the disputed domain name to this mark.
As a general rule, the addition of a generic term to a domain name consisting of a trademark rarely excludes a finding of confusing similarity under the Policy. This finding is consistent with a number of previous UDRP panel decisions (see, e.g., Bravomedia LLC v. Name, Administrator, Hong Kong Domains LLC, WIPO Case No. D2009-0586; Grupo Televisa, S.A., Televisa S.A. de C.V., Comercio Mas; S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Registrant info@ fashionid.com 9876543210, WIPO Case No. D2003-0735; British Broadcasting Corporation v. Registrant (187640) email@example.com +1.25255572, WIPO Case No. D2005-1143).
The Panel finds that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
There is no indication that the Respondent is licensed or otherwise authorized by the Complainant to use its registered trademarks or to register the disputed domain name.
The element “lindor” used in the disputed domain name does not have any descriptive meaning related to the content of the Respondent’s website. The terms “lindortruffles” or “lindor” on the website at the disputed domain name are not apparently used as a designation for a person or a company other than the Complainant or for services or products other than those provides by the Complainant.
By producing evidence of these circumstances, the Complainant has established a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name. The evidentiary burden therefore shifts to the Respondent. The Respondent must then by concrete evidence demonstrate its rights or legitimate interests in that domain name in order to refute the prima facie case. The Respondent has made no such showing.
The Panel finds that the Respondent’s default in refuting the prima facie case made by the Complainant is sufficient to establish this element of the Policy as it is an impossible task for the Complainant to prove a negative that is primarily within the knowledge of the Respondent, such as the lack of rights or legitimate interests in the disputed domain name.
Producing prima facie evidence that the Respondent has no rights or legitimate interests in the disputed domain name must therefore be regarded as sufficient under these circumstances to establish the requirement of paragraph 4(a)(ii) of the Policy if the Respondent fails to rebut the prima facie case. This finding is consistent with the consensus in previous UDRP panel decisions (see, e.g., Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
The Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
The Panel finds that the Complainant has established this element in accordance with paragraph 4(b)(iv) of the Policy for the following reasons:
The Panel finds, by using the disputed domain name for a set of pay-per-click links, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s LINDOR trademarks as to source, sponsorship and affiliation of the website (paragraph 4(b)(iv) of the Policy).
The disputed domain name combines the Complainant’s trademark LINDOR with the term “truffles” which is descriptive with respect to the products marketed under the Complainant’s trademarks. In the Panel’s view, Internet users are therefore likely to get the idea that the Respondent’s site at the disputed domain name is sponsored by the Complainant or affiliated with the Complainant. Such likelihood of confusion will likely attract more customers to the site at the disputed domain name which will result in commercial gain as the Respondent’s site provides links to numerous commercial websites.
The Panel finds that the Respondent acted intentionally. It is not conceivable to the Panel that the Respondent could have registered the disputed domain name without having the Complainant and its trademarks in mind. The Respondent’s intention to use the disputed domain name as a reference to the Complainant and its trademarks is obvious to the Panel considering that no rights or legitimate interests in using the disputed domain name are apparent, that the Complainant’s trademarks have been registered years before the registration of the disputed domain name and that LINDOR is an intensively used trademark.
The finding of registration and use in bad faith is further supported by the facts that the disputed domain name owner shields its identity by a privacy service and that the disputed domain name is being offered for sale. Although these elements on their own may not suffice to establish bad faith registration and use, they support this finding when considered in combination with the circumstances set out above.
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, <lindortruffles.com>, be transferred to the Complainant.
Date: June 4, 2015