WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chocoladefabriken Lindt & Sprüngli AG v. Lasco Maxim
Case No. D2015-1430
1. The Parties
The Complainant is Chocoladefabriken Lindt & Sprüngli AG of Kilchberg, Switzerland, represented by BrandIT Legal AB, Sweden.
The Respondent is Lasco Maxim of Chisinau, Republic of Moldova.
2. The Domain Name and Registrar
The disputed domain name <lindtstore.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 August 13, 2015. On August 14, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 14, 2015, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 24, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 13, 2015. On September 13, 2015, the Respondent submitted an informal communication to the Center. No formal Response was submitted.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on September 29, 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 an international manufacturer of premium chocolate, based in Switzerland, which sells chocolates around the world under its registered LINDT mark. The Complainant owns several registrations for the word mark LINDT, including the international registration of the word mark LINDT, filed under nr. 217838 in 1959, which was in 2011extended for the Republic of Moldova, where the Respondent resides (hereafter the "Trade Mark"). In addition, there is a local store in Chisinau in the Republic of Moldova where the Complainant sells its products under the Trade Mark.
The domain name <lindstore.com> (hereinafter the "Domain Name") was registered on June 11, 2015.
5. Parties' Contentions
The Complainant points out that the Domain Name directly incorporates the Trade Mark, and merely adds the descriptive word "store", which suggests to Internet users that they could find information about the Complainant's stores on the website connected to the Domain Name. The generic Top-Level Domain (gTLD) ".com" does not add any distinctiveness to the Domain Name, so that it should be considered as confusingly similar to the Trade Mark, the Complainant submits.
According to the Complainant it has not found any information that the Respondent is commonly known by the Domain Name, while the registrant's name Lasco Maxim is not similar to the Domain Name. The Complainant states that it has not authorized the Respondent to incorporate the Trade Mark in the Domain Name. The Complainant also brings forward that the website connected to the Domain Name displays the LINDT logotype as a banner along the top line of the website which thereby appears to be endorsed by the Complainant. The Complainant further submits that the website also contains a drop down menu where competing brands in the same industry such as MONDELEZ and CADBURY are being advertised. According to the Complainant, the Respondent has also registered the corresponding domain names <cadburystore.com> and <mondelezstore.com>, indicating that there is a pattern of abusive registrations by the Respondent.
The Complainant states that when accessing the "discount chat" button displayed at the center of the website connected to the Domain Name, login credentials are requested and prospective customers are required to register for an account to activate the function. Such request for sensitive information on a website which the Complainant does not control is a security threat and, the Complainant submits, may cause bad will if the information obtained is used in a manner which does not rhyme with the Complainant's security measures.
The Complainant points out that it has tried to contact the Respondent on June 23, 2015 through a cease and desist letter but received no response. According to the Complainant, the Respondent takes advantage of the LINDT trade mark by intentionally attempting to attract visitors to the Respondent's website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or a product or service on the Respondent's website or location. As to registration in bad faith, the Complainant submits that it has demonstrated substantial use and promotion of the Trade Mark in the field of chocolate and confectionary, including in the Republic of Moldova, and according to the Complainant it is inconceivable that the Respondent was not aware of the existence of the Trade Mark with which the Domain Name is confusingly similar, at the time of registration.
The Respondent did not submit a formal Response, but has, by email of September 13, 2015 to the Complainant undertaken not to use the Domain Name and has offered the Domain Name for sale to the Complainant. By email of September 14, 2015 the Complainant has responded that the current proceedings had been initiated, that the Respondent had not responded to any previous communication from the Complainant or the Center and that the Complainant was not willing to purchase the Domain Name.
By email of September 22, 2015 the Respondent confirmed that it would not use the Domain Name and clarified that it was prepared to transfer the Domain Name in return for the Registrar granting the possibility to choose another domain name "with same features" or against payment of the price it had originally paid for the Domain Name. The Center informed the Respondent that the Complainant had already indicated (as was conferred upon the Respondent) that it was not interested in purchasing the Domain Name, while the Center had proceeded with the appointment of the Panel.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has shown that it has rights in the Trade Mark and its reputation in the world, including in the Republic of Moldova. The Trade Mark consists of the name LINDT which is incorporated in its entirety in the Domain Name. The addition in the Domain Name of the generic word "store" does not change the confusing similarity of the Trade Mark and the Domain Name, also taking into account that LINDT is not a generic term or word, as well as the reputation of the Trade Mark (see also WIPO Overview of WIPO Panel views on selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.9). The addition of the generic Top Level Domain ("gTLD") ".com" does not change the overall impression, as the applicable top-level suffix in the Domain Name must be disregarded under the confusing similarity test, since it is a technical registration requirement (See WIPO Overview 2.0, paragraph 1.2).
Therefore, the Panel finds that the Domain Name is identical or, in any case, confusingly similar to the Trade Mark.
B. Rights or Legitimate Interests
The Complainant has to make out a prima facie case that the Respondent does not have rights or legitimate interests in the Domain Name (WIPO Overview 2.0, paragraph 2.1). Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the Respondent is not commonly known by the Domain Name and has not acquired trade mark rights to the Domain Name. The Complainant has not authorized, licensed or otherwise consented to the Respondent's registration and use of the Trade Mark as part of the Domain Name. The use of the Domain Name for a pay-per-click website, containing links to websites with information on goods competing with those of the Complainant does not constitute "a bona fide offering of goods or services", nor a "legitimate noncommercial or fair use" (see Sanofi v. Hka c/o Dynadot Privacy, WIPO Case No. D2014-0829; Groupon Inc. v. Andrew Williamson, WIPO Case No. D2015-0488 and the cases cited in WIPO Overview 2.0, paragraph 2.6).
Furthermore, also taking into account the reputation of the Trade Mark, the Panel cannot conceive of any fair use of the Domain Name.
In view of the above, the Panel concludes that the Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Based on the information and the evidence provided by the Complainant, the Panel finds that at the time of registration of the Domain Name the Respondent was or should have been aware of the Trade Mark. First, the oldest registration of the Trade Mark predates the Domain Name registration by 56 years, while it was extended in 2011 to the Republic of Moldova, the state of domicile of the Respondent.
Secondly, the name LINDT, of which the Trade Mark consists and which is incorporated in its entirety in the Domain Name, is not a name that a person wishing to register a domain name would accidently think of.
Thirdly, the fact that the Respondent has also registered a similar domain name for two competitors of the Complainant (<cadburystore.com> and <mondelezstore.com>) makes it likely that the Respondent deliberately chose the Trade Mark as part of the Domain Name.
Under these circumstances, the Panel concludes that the Domain Name has been registered in bad faith.
The fact that the Domain Name was connected to a website containing hyperlinks to websites offering products of competitors of the Complainant, using a logo of the Complainant, clearly indicates that the Respondent was seeking to attract for commercial gain Internet users to its website by falsely creating the impression that it was somehow supported or approved by or connected to the Complainant as per paragraph 4(b)(iv) of the Policy.
Therefore, the Panel concludes that the Domain Name has been registered and is being used 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 <lindtstore.com> be transferred to the Complainant.
Wolter Wefers Bettink
Date: October 13, 2015