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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

See’s Candy Shops, Inc. v. Mariya Solomon, JonnyWas Dress

Case No. D2021-1450

1. The Parties

Complainant is See’s Candy Shops, Inc., United States of America (the “United States”), represented by Vorys, Sater, Seymour and Pease, LLP, United States.

Respondent is Mariya Solomon, JonnyWas Dress, United States.

2. The Domain Name and Registrar

The disputed domain names <seescandybay.com> and <seescandybea.com> are registered with eNom, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 2021. On May 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 11, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 17, 2021, 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 on May 20, 2021.

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 Respondent of the Complaint, and the proceedings commenced on May 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 15, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 16, 2021.

The Center appointed Lorelei Ritchie as the sole panelist in this matter on June 23, 2021. 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

Complainant is a purveyor of candy and confections, based in California, in the United States. Since at least the 1980s, Complainant, together with its predecessor companies, corporate affiliates, and other companies of the Complainant’s group (collectively, “Complainant”) has manufactured and sold candies under the mark SEE’S CANDIES. Complainant owns several trademark registrations for its SEE’S CANDIES mark. These include United States Registration Nos. 1,515,983 (registered December 6, 1988) and 3,375,797 (registered January 29, 2008).).

The disputed domain name <seescandybay.com> was registered on March 1, 2021 and, the disputed domain name <seescandybea.com>, was registered on April 6, 2021. Respondent has used the URLs associated with the disputed domain names to resolve to webpages that purports to offer Complainant’s products for sale, but include links to competing candy and confectionery offerings. Respondent has no affiliation with Complainant. Complainant has not authorized any activities by Respondent, nor any use of its trademarks thereby.

5. Parties’ Contentions

A. Complainant

Complainant contends that (i) the disputed domain names are identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain names; and (iii) Respondent registered and is using the disputed domain names in bad faith.

In particular, Complainant contends that it has established rights in its registered SEE’S CANDIES mark. Complainant contends that the disputed domain names incorporate its well-known SEE’S CANDIES mark. Complainant further contends that Respondent lacks rights or legitimate interests in the disputed domain names, and rather has registered and is using them in bad faith, having simply acquired the disputed domain names for Respondent’s own commercial gain, in an attempt to confuse consumers.

B. Respondents

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel must first determine whether the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that that they are. The disputed domain names incorporate in full Complainant’s established SEE’S CANDIES mark, with the simple deletion of an apostrophe, and the addition of the dictionary terms or letters “bay” or “bea.”

Numerous UDRP panels have agreed that supplementing or modifying a trademark with additional words or letters does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example, Inter Ikea Systems B.V. v. Polanski, WIPO Case No. D2000-1614 (transferring <ikeausa.com>); Microsoft Corporation v. Step-Web, WIPO Case No. D2000-1500 (transferring <microsofthome.com>); CBS Broadcasting, Inc. v. Y2K Concepts Corp., WIPO Case No. D2000-1065 (transferring <cbsone.com>). Similarly, minor changes of punctuation do not affect the analysis. SeeGeneral Electric Company v. Recruiters, WIPO Case No. D2007-0584 (transferring <ge-recruiting.com>);

The Panel therefore finds that Complainant has satisfied the first UDRP element, in showing that the disputed domain names are confusingly similar to a trademark in which Complainant has rights in accordance with paragraph (4)(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Policy provides some guidance to respondent on how to demonstrate rights or legitimate interests in the domain name at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “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”.

No evidence has been presented to the Panel that might support a claim of Respondent’s rights or legitimate interests in the disputed domain names, and Respondent has no license from, or other affiliation with, Complainant. Therefore, the Panel finds that Complainant has provided sufficient evidence of Respondent’s lack of “rights or legitimate interests” in accordance with paragraph 4(a)(ii) of the Policy which Respondent has not rebutted.

C. Registered and Used in Bad Faith

There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] website or location”. As noted in Section 4 of this Panel’s decision, Respondent has used the URL associated with the disputed domain names to resolve to webpages that purports to offer the Complainant’s products but include links to competing candy and confectionery offerings.

Respondent is thus trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain.

Therefore, the Panel finds that Respondent registered and used the disputed domain names in bad faith for purposes of paragraph (4)(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, <seescandybay.com> and <seescandybea.com>, be transferred to Complainant.

Lorelei Ritchie
Sole Panelist
Dated: July 7, 2021

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