WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chocoladefabriken Lindt & Sprüngli AG v. Isaac Goldstein
Case No. D2015-2168
1. The Parties
The Complainant is Chocoladefabriken Lindt & Sprüngli AG of Kilchberg, Switzerland, represented by BrandIT Legal AB, Sweden.
The Respondent is Isaac Goldstein of Hong Kong, China.
2. The Domain Name and Registrar
The disputed domain name <wwwrussellstover.com> (the "Domain Name") is registered with TradeNamed LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 30, 2015. On December 1, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 4, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 9, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 14, 2015. In accordance with the Rules, paragraph 5, the due date for Response was January 3, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 4, 2016.
The Center appointed Charters Macdonald-Brown as the sole panelist in this matter on January 15, 2016. 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 holding company of the Lindt & Sprüngli Group, which acquired the US company Russell Stover Candies, Inc. in July 2014. It manufactures and sells chocolates internationally under a number of brands, including "Russell Stover".
The Complainant owns several registered trade marks around the world for trade marks that consist of or contain the mark RUSSELL STOVER. The Complainant has provided evidence of the following registrations owned by the Complainant:
(i) a trade mark for RUSSELL STOVER PECAN DELIGHTS registered on September 29, 1994 with the Trade Marks Registry of the Hong Kong Intellectual Property Department to identify candy containing pecans included in Class 30;
(ii) a trade mark for RUSSELL STOVER registered on October 26, 2015 with WIPO to identify, inter alia, chocolate products, retail sale services, and services for providing food and drink and temporary accommodation;
(iii) a trade mark for RUSSELL STOVER registered on April 10, 1961 with the US Patent and Trademark Office to identify candy.
The Complainant also owns various registrations for domain names that consist of or contain the mark RUSSELL STOVER. For the purpose of this decision, these will be collectively referred to as the "RUSSELL STOVER Domain Name". The Complainant has provided evidence of the following registrations owned by the Complainant:
(i) the domain name <russellstover.com>, registered on December 21, 1996; and
(ii) the domain name <russellstover.us>, registered on October 20, 2014.
The Respondent appears to be an individual known as "Isaac Goldstein", resident in Hong Kong, China. The Respondent did not provide a response to the Complaint, so the Panel has little further information about him. According to a public search of WIPO UDRP cases, the Respondent has been involved as a respondent in 15 prior UDRP decisions since 2010; the domain name was transferred in all but one of those cases.
The Domain Name was created on July 7, 2015. The Domain Name re-directs to a number of rotating third party websites, including a website which appears to encourage the visitor to join a millionaire lottery.
5. Parties' Contentions
The Complainant asserts that it owns registrations for the word mark for RUSSELL STOVER internationally as well as registrations for domain names including RUSSELL STOVER. It contends that the Domain Name is confusingly similar to the registered trade mark RUSSELL STOVER because it comprises the entirety of the Complainant's trade mark save only for the "www" prefix and the generic Top Level Domain (gTLD) suffix ".com". In support of its contention, the Complainant cites Publix Asset Management Company v. DigiMedia Holding Domain Administrator / Whois Privacy Services Pty Ltd, WIPO Case No. D2015-1299, which found that "the addition of the "www" prefix was very likely intended to draw in Internet users who mistyped the Complainant's website address by omitting the period (or full stop) between "www" and "publix.com" and does not detract from the distinctiveness of the "publix" element. It is also permissible to ignore the ".com"suffix for the purpose of assessing the similarity of the Domain Name and the mark in which the Complainant has rights."
The Complainant further alleges that the Respondent has no rights or legitimate interests in the Domain Name, noting that the Respondent has never been granted permission to register the Domain Name.
The Complainant also contends that the Respondent registered and uses the Domain Name in bad faith. The Complainant asserts that the Respondent is using the website at the Domain Name in order to perpetrate a fraudulent lottery scam, and is attempting to attract visitors to that website by creating a likelihood of confusion with the Complainant's trade 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. The Complainant also notes the number of UDRP proceedings in which the Respondent has been involved, and suggests that the Respondent has been engaged in a pattern of abusive registrations.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that the following three elements are all satisfied:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent does not have any rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has demonstrated its ownership of registered trade marks for RUSSELL STOVER and thereby established that it has trade mark rights in RUSSELL STOVER.
The Domain Name contains the mark RUSSELL STOVER in its entirety. The only differences between the Domain Name and the mark RUSSELL STOVER are the addition of "www", the addition of the ".com" generic Top Level Domain ("gTLD"), and the deletion of the space between RUSSELL and STOVER. Neither the addition of the generic, non-distinctive letters "www" (commonly used to refer to the World Wide Web) nor the gTLD (which is a technical requirement of registration) distinguish the Domain Name from the Complainant's RUSSELL STOVER mark: see, e.g. Thule Sweden AB v. Isaac Goldstein, WIPO Case No. D2013-2152.
In the Panel's view, the (low) threshold test for paragraph 4(a)(i) of the Policy is satisfied and the Domain Name is (at least) confusingly similar to trade marks in which the Complainant has rights. The Complainant has established the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides the following non-exhaustive list of circumstances which demonstrate that the Respondent has rights or legitimate interests to the Domain Name:
(i) before any notice to the Respondent of the dispute, its use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Where there has been no response by a respondent, previous UDRP panels have found that the complainant has satisfied paragraph 4(a)(ii) of the Policy if it makes out a prima facie case that the respondent lacks rights or legitimate interests in a disputed domain name.
According to the Complainant, the Respondent has never been granted permission to register the Domain Name.
There is no evidence of the Respondent's use of, or demonstrable preparation to use, the Domain Name (or a name corresponding to the Domain Name) in connection with a bona fide offering of goods or services. In contrast, the Complainant asserts that the Respondent has used the Domain Name in connection with third party websites offering gambling services and encouraging visitors to provide personal information (e.g. name, phone number and email address) so they can join a millionaire lottery.
The Complainant is not aware of the Respondent having ever been commonly known by the Domain Name. Moreover, the Respondent's WhoIs information does not indicate that Respondent is commonly known by the Domain Name. In addition, the fact that the RUSSELL STOVER mark has been used by the Complainant (or, pre-acquisition, Russell Stover Candies, Inc.) for many years around the world, with numerous registrations for the mark, may indicate that the Respondent is unlikely to be commonly known by this mark.
Given the current use of the Domain Name, the Respondent is not making a legitimate noncommercial or fair use of the Domain Name.
The Panel is satisfied that the Complainant has, prima facie, established that the Respondent lacks rights or legitimate interests in the Domain Name.
The Respondent is in default, and has failed to come forward with any evidence demonstrating rights or legitimate interests in the Domain Name.
Based on the Respondent's default and on the prima facie evidence provided in the Complaint, the Panel finds that the Respondent does not have any rights or legitimate interests in the Domain Name. The Complainant has established the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides examples of circumstances which demonstrate that a respondent has registered and used the domain name in bad faith, including where a respondent, by using the domain name, has "intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location".
The Domain Name is confusingly similar to the well-known trade mark, RUSSELL STOVER. When the Domain Name was registered (on July 7, 2015), RUSSELL STOVER was already internationally recognized in (at least) the field of confectionery products, and registrations for the mark had been granted in (at least) the US and Hong Kong many years before the date on which the Domain Name was registered. In addition, the official Russell Stover website at <russellstover.com> is the first result on Google for "russell stover". Therefore, the Panel is persuaded that the Respondent was or should have been aware of the reputation and business of Russell Stover, a subsidiary of the Complainant, when he acquired the Domain Name, so that the clear inference is that he selected the Domain Name with the RUSSELL STOVER trade marks in mind.
This is supported by the fact that, the Domain Name sometimes redirects to a website on which there appear to be a number of links, including to "Russell Stover Candy" and "Russell Stover Candy Outlet". The use of such links suggests that the Respondent was attempting to create a likelihood of confusion with the RUSSELL STOVER trade mark as to the source of the website at the Domain Name, in order to attract Internet users to its website (and the related third party websites).
The Respondent did not submit any evidence of bona fide use of the Domain Name (or any response whatsoever in these proceedings). Nothing in the record suggests that the Respondent has a bona fide reason for his choice of a domain name that is confusingly similar to trade marks in which the Complainant has rights. In addition, the apparent use by the Respondent of the Domain Name to perpetrate an apparent fraudulent lottery scam leads the Panel to conclude that the Domain Name was registered and is being used by the Respondent in bad faith, satisfying the third element 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, <wwwrussellstover.com>, be transferred to the Complainant.
Date: January 28, 2016