WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hershey Chocolate & Confectionery Corporation v. L. Roman T. Sorrells, PARI’ZA Studios
Case No. D2017-0128
1. The Parties
Complainant is Hershey Chocolate & Confectionery Corporation of Wheat Ridge, Colorado, United States of America (“U.S.”), represented by Downs Rachlin & Martin, PLLC, U.S.
Respondent is L. Roman T. Sorrells, PARI’ZA Studios of Glendale, Arizona, U.S.
2. The Domain Name and Registrar
The disputed domain name <hersheykyss.com> (the “Domain Name”) 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 January 23, 2017. On January 24, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 25, 2017, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on February 1, 2017. On February 22, 2017, Respondent requested an extension of the Response due date. In accordance with the Rules, paragraph 5(b), the Center extended the Response due date to February 25, 2017. Respondent did not however submit any formal response. Accordingly, the Center notified the parties about the commencement of panel appointment process on February 27, 2017.
The Center appointed John C McElwaine as the sole panelist in this matter on March 9, 2017. 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.
On February 22, 2017, along with its extension request, Respondent indicated that it is interested in resolving this issue, that the website is not pornographic and for that reason, the owner of the disputed domain name Jacqueline Hershey would like to retain it.
On March 10, 2017, Respondent sent another email to the Center stating, “I have no idea what I am supposed to be doing with this I am an average guy, who purchased this domain for a client an [sic] on top of that, I do not make enough money to afford a lawyer, any help would be greatly appreciated.” As an initial matter, under the Policy and the Rules, parties have no right to unilaterally submit additional arguments or evidence beyond the Complaint and Response. However, the Panel may, in its sole discretion, request further statements or documents from the parties under paragraph 12 of the Rules; and a party’s request may be regarded as an invitation to the Panel to exercise this discretion. The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447. Given the fact that Respondent is an individual, and is unrepresented in this matter, the Panel will consider this email but solely as evidence that Respondent is the registrant of the Domain Name and asserts that he intended to purchase the Domain Name for a client.
4. Factual Background
Complainant, Hershey Chocolate & Confectionery Corporation, is the owner of the HERSHEY’S trademark.
Complainant owns U.S. Registration No. 222,759, registered January 11, 1927 with the U.S. Patent and Trademark Office (“USPTO”) for the mark HERSHEY’S for sugar and U.S. Registration No. 1,549,371, registered July 25, 1989 with the USPTO for the mark HERSHEY’S KISSES for chocolates. Moreover, Complainant owns a registration for the stylized HERSHEY’S mark, U.S. Registration No. 4,955,055 registered May 10, 2016, with a first use in commerce date of December 31, 1936, for candy; chocolate; and cacao.
On July 1, 2016, Respondent registered the Domain Name with the Registrar. The Domain Name links to a website that promotes a model apparently named Jackie Hershey and calling herself “Hershey Kyss”.
5. Parties’ Contentions
Complainant is the owner of the HERSHEY’S trademark, which is alleged to have been used by Complainant or related companies continuously in commerce in connection with chocolate, candy and other confectionary items, both in the U.S. and worldwide, for well over 100 years.
A related company, the Hershey Chocolate Company, was established in 1894, and Hershey’s milk chocolate was first introduced in 1900. The HERSHEY’S brand was the country’s first national confectionary brand, and it quickly dominated an industry otherwise made up of local and regional companies. Complainant asserts that the HERSHEY’S brand became synonymous with quality milk chocolate, and Hershey’s remains the top confectionary company in the U.S. to this day.
Hershey’s Kisses which are small foil wrapped chocolates were first introduced in 1907. Complainant is the owner of the HERSHEY’S KISSES trademark, which is alleged to have been used by Complainant or related companies continuously in commerce in connection with chocolates, both in the U.S. and worldwide, for well over 100 years. Complainant also claims to own common law rights in the mark KISSES on its own, for chocolates and other goods.
In the U.S., Complainant owns U.S. Registration No. 222,759, registered on January 11, 1927 for the mark HERSHEY’S for sugar, U.S. Registration No. 1,549,371, registered July 25, 1989 for the mark HERSHEY’S KISSES for chocolates, and U.S. Registration No. 4,918,242, registered March 15, 2016 for the mark KISSES for candy, chocolate and chocolate candies. Together Complainant’s HERSHEY’S trademark, HERSHEY’S KISSES trademark, and KISSES trademark and common law rights in such marks are collectively referred to as the “HERSHEY’S Marks.” Complainant further alleges that the HERSHEY’S Marks are famous due to the length of time that these marks have been in use and the dominant position of the Hershey company within its industry. Complainant also points out that two other UDRP panel decisions have found that the HERSHEY’S Marks are famous or well-known. See, e.g., Hershey Foods Corporation and Hershey Chocolate & Confectionery Corporation v. DRP Services (Hersheychocolateworld-Com-Dom), WIPO Case. No. D2003-0841) (adopting the complainants’ representation of the HERSHEY marks as famous) and Hershey Foods Corporation and Hershey Chocolate & Confectionery Corporation v. Amcore & Company For sale domains $250 or best offer, WIPO Case No. D2003-0838 (finding that <hesheys.com> registered and used in bad faith was supported by fact that complainants’ trademarks were “well known”).
With respect to the first element of the Policy, Complainant alleges that the Domain Name is a misspelling of Complainant’s HERSHEY’S KISSES mark. Complainant asserts that Respondent’s use of minor variations in spelling (“hershey” instead of “hershey’s” and “kyss” instead of “kisses”) does nothing to avoid a finding of confusing similarity.
With respect to the second element of the Policy, Complainant asserts that it has never licensed or authorized the use of its HERSHEY’S Marks to Respondent in any manner. Complainant alleges that Respondent uses the Domain Name in connection with a website described by Complainant as “an adult-themed sex site displaying images, videos and other content featuring an ‘international glamour model & dancer’ identified as ‘Jacqueline Hershey’, who also uses the moniker ‘Hershey Kyss’.” Complainant alleges that the website located at the Domain Name offers users who pay to join the site access to “sexy, hot” content.
Complainant alleges that Respondent’s use of the Domain Name is not bona fide because its use creates confusion and dilutes Complainant’s HERSHEY’S Marks. This claim is based upon an assertion that the only reason to use Complainant’s famous HERSHEY’S Marks in the Domain Name would be to attract customers who were not looking for Respondent’s site, but were instead looking for Complainant’s products. Complainant points out that even if Respondent could establish a bona fide right to use “Hershey,” this would not be sufficient to demonstrate a legitimate interest in the Domain Name, which, in addition to the term “hershey,” also includes the term “kyss,” making the entire Domain Name an obvious reference to Complainant’s HERSHEY’S KISSES Mark.
With respect to the final element of the Policy, Complainant alleges that Respondent has engaged in bad faith registration of the Domain Name because Respondent acquired the Domain Name for the purpose of profiting from Complainant’s goodwill in its registered trademarks. It is alleged that the fame of Complainant’s HERSHEY’S Marks is further evidence of such intent. Likewise, Respondent’s intent is evidenced by the website located at the Domain Name which prominently features the wording “HERSHEY KYSS,” with “HERSHEY” displayed in a stylization that imitates the stylized HERSHEY’S mark depicted in U.S. Registration No. 4,955,055. Complainant further claims that Respondent’s use of the Domain Name to promote a website described as “an adult-themed, sexually explicit site is further evidence of bad faith registration and use.”
Respondent did not substantively reply to Complainant’s contentions.
6. Discussion and Findings
Even though Respondent did not substantively reply to Complainant’s contentions, paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with evidence demonstrating:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Name has been registered and is being used in bad faith.
Because of Respondent’s failure to submit a substantive response to the Complaint, the Panel may accept as true the factual allegations stated within the Complaint, and may draw appropriate inferences therefrom. See, St. Tropez Acquisition Co. Limited v. AnonymousSpeech LLC and Global House Inc., WIPO Case No. D2009-1779.
Having considered the Complaint, Respondent’s informal emails, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainant show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
Complainant has established rights in the HERSHEY’S Marks as evidenced by its trademark registrations, its long-standing use of the HERSHEY’S Marks in connection with chocolate and confections, and the significant marketing of the HERSHEY’S Marks that Complainant has undertaken.
As discussed in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.10, the consensus view is that a domain name consisting of a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name. Similarly, UDRP panels have consistently held that “a mere addition or a minor misspelling of Complainant’s trademark does not create a new or different mark in which Respondent has legitimate rights.” Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator, WIPO Case No. D2008-1302 (“Such insignificant modifications to trademarks is commonly referred to as ‘typosquatting’ or ‘typo-piracy,’ as such conduct seeks to wrongfully take advantage of errors by users in typing domain names into their web browser’s location bar.”) Here, the difference between HERSHEY and HERSHEY’S is not so significant as to create a different commercial impression. See ESH Strategies Branding, LLC v. Kumpol Sawaengkarn, WIPO Case No. D2011-0843 (the addition or subtraction of the letter “s” from a name is a common mistake Internet users make, and therefore, constitutes typosquatting). Likewise, the replacement of the “i” in the word “kiss” with the letter “y” leaves a visually similar word with an identical pronunciation.
In sum, the Domain Name, <hersheykyss.com>, is confusingly similar to the HERSHEY’S Marks. The Panel finds that Complainant has met its burden under the first element of the Policy.
B. Rights or Legitimate Interests
Under the Policy paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Name. Complainant need only make a prima facie showing on this element, at which point the burden shifts to Respondent to present evidence that it has some rights or legitimate interests in the Domain Name. If Respondent has failed to do so, Complainant is deemed to have satisfied its burden under paragraph 4(a)(ii) of the Policy. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252.
Complainant contends there has never been a relationship between Complainant and Respondent that would give rise to any license, permission or authorization for Respondent to use or register the Domain Name. Although Respondent has been properly notified of the Complaint by the Center, Respondent failed to submit any substantive response on this point and yet even requested an extension to file its response. The silence of a respondent may support a finding that it has no rights or legitimate interests in respect of the domain name. See Alcoholics Anonymous World Services, Inc., v. Lauren Raymond, WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S., WIPO Case No. D2000-0011. Additionally, previous UDRP panels have found that when respondents have not availed themselves of their rights to respond to complainant, it can be assumed in appropriate circumstances that respondents have no rights or legitimate interests in the domain name at issue. See AREVA v. St. James Robyn Limoges, WIPO Case No. D2010-1017; Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269.
Under paragraph 4(c) of the Policy, a respondent’s rights or legitimate interests to a domain name may be established by demonstrating any of the following three conditions: (i) before any notice to respondent of the dispute, respondent’s 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) respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or (iii) 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 trademark or service mark at issue. The Panel finds that Respondent has failed to show rights or legitimate interests under any of the three conditions or otherwise.
Respondent purports to have acquired the Domain Name for a client named Jacqueline or Jackie Hershey. Regardless of who the beneficial owner may be the disputed domain name is not being used in connection with a bona fide offering of goods or services. To the extent Respondent may be claiming he is licensing the Domain Name, other UDRP panels have found that a respondent’s leasing of domain names to a third party for use without complainant’s authorization does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy 4(c)(i) or 4(c)(iii). The Panel finds that, without additional explanation or evidence, Respondent’s acquisition of the Domain Name (even if for a client) is not sufficient to establish a bona fide offering of goods or services. Furthermore, the website to which the Domain Name resolves could change at any time according to the sole will of Respondent, who Complainant has not authorized to use any of the HERSHEY’S Marks and over whom Complainant has no control. See Groupe Auchan v. Slawomir Cynkar, supra (“The fact that the disputed domain names now direct to one of the Complainant’s websites ‘www.group-auchan.com’ does not diminish the fact that they are used in bad faith. This is not a legitimate offer of goods or services. Respondent is not authorized to use Complainant’s trademark AUCHAN in any way. Beside this the Complainant has no control over this re-direction which could therefore be changed by the sole will of Respondent at any time.”)
Even if it was accepted that Respondent (standing, as if it were, in the client’s shoes) thought his client had a bona fide intention to use the surname, Hershey, in a domain name, such good faith evaporates when Respondent intentionally added the term “KYSS” to the surname thereby creating a domain name that is confusingly similar to and dilutive of the Complainant’s HERSHEY’S KISSES trademark. The logo incorporating “hershey” featured on the website has a striking resemblance to Complainant’s logo mark, and the Panel infers that this was a deliberate attempt to draw an unjust association with Complainant’s name.
Lastly, Respondent cannot claim a safe harbor under paragraph 4(c)(iii) of the Policy because the Domain Name was unquestionably picked to divert consumers and, due to the subject matter of the website located at the Domain Name, tarnishes the HERSHEY’S Mark.
Based upon the foregoing, Complainant has made a prima facie showing of Respondent’s lack of any right or legitimate interest and Respondent has failed to sufficiently rebut that showing. The Panel finds that Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Complainant must show that Respondent registered and is using the Domain Name in bad faith. Paragraph 4(a)(iii) of the Policy.
A non-exhaustive list of circumstances that constitute bad faith registration and use is set out in paragraph 4(b) of the Policy, including paragraph 4(b)(iv). Paragraph 4(b)(iv) of the Policy specifies that bad faith exists where a respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
Bad faith can be found where respondents “knew or should have known” of complainant’s trademark rights and nevertheless registered a domain name in which it had no right or legitimate interest. See Accor S.A. v. Kristen Hoerl, WIPO Case No. D2007-1722. Complainant contends that Respondent must have known of Complainant’s well-known HERSHEY’S Mark when it registered the Domain Name. As supporting evidence it is telling that the website located at the Domain Name displays the term “Hershey” in a font identical to or highly similar to the stylized font used by Complainant.
In addition, the Panel accepts that the HERSHEY’S Mark is well-known in the field of candies and confections. Such a finding has been confirmed by previous UDRP decisions. See, e.g., Hershey Foods Corporation and Hershey Chocolate & Confectionery Corporation v. Amcore & Company For sale domains $250 or best offer, supra; Hershey Foods Corporation and Hershey Chocolate & Confectionery Corporation v. DRP Services (Hersheychocolateworld-Com-Dom), supra.
There is substantial authority that registration of a domain name that is confusingly similar to a well-known trademark by any entity that has no relationship to that mark, is itself sufficient evidence of bad faith registration and use. See Allianz, Compañía de Seguros y Reaseguros S.A. v. John Michael, WIPO Case No. D2009-0942 (“the Panel concurs with previous UDRP decisions holding that registration of a well-known trademark as a domain name is a clear indication of bad faith in itself”), citing, Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Pepsico, Inc. v. “null”, aka Alexander Zhavoronkov, WIPO Case No. D2002-0562; and Pepsico, Inc. v. Domain Admin, WIPO Case No. D2006-0435.
Moreover, as discussed in the WIPO Overview 2.0, paragraph 3.11, “intentional tarnishment of a complainant’s trademark may in certain specific circumstances constitute evidence of registration and/or use of a domain name in bad faith.” In particular, as noted by the panel in The Perfect Potion v. Domain Administrator, WIPO Case No. D2004-0743, “the linking of domain names to pornographic websites can constitute bona fide offerings of services for the purposes of paragraph 4(c)(i) of the Policy, and can only support a finding of bad faith for the purposes of paragraph 4(b)(iv) of the Policy if it is shown to the satisfaction of the Panel that the Respondent had the Complainant or its trade mark in mind when selecting the domain name for that purpose.” Here, Respondent linked the Domain Name to a website that mimicked Complainant’s stylized HERSHEY’S trademark. The Domain Name also includes a misspelling of Complainant’s HERSHEY’S KISSES trademark. The Panel finds that the Respondent (or his client) unquestionably had Complainant’s HERSHEY’S Mark in mind when the Domain Name was selected.
It also does not matter whether the website located at the Domain Name meets the legal definition of being pornographic in nature. In CHRISTIAN DIOR COUTURE v. Paul Farley, WIPO Case No. D2008-0008, that panel evaluated whether a BDSM website might sufficiently tarnish the complainant’s trademark to constitute bad faith. In its analysis, the panel held that “if the nature of the website is such that linkage with a complainant’s mark could reasonably be supposed to tarnish that mark (in the same way that numerous panels have held that pornographic websites do), the result should be the same.” The Panel notes that the website in this case advertises “provocative videos” and “sexy, hot behind the scenes” content. Complainant’s candy products are known to be enjoyed by adults and children alike. The Panel finds that the website in this case is of a kind that could reasonably tarnish the Complainant’s HERSHEY’S Marks.
For these reasons, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the 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 Domain Name, <hersheykyss.com>, be transferred to Complainant.
John C McElwaine
Date: March 31, 2017