WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Supreme Chocolatier, L.L.C. v. Debra Bauer
Case No. D2001-0882
1. The Parties
The Complainant in this administrative proceeding is Supreme Chocolatier, L.L.C. whose address is 1150 South Avenue, Staten Island, NY 10314, USA. The Respondent in this case is Debra Bauer whose address is 10027 20th St., Apt. Q, Santa Monica, CA 90403, USA.
2. The Domain Name(s and Registrar
The domain names at issue are , , , and which are registered with Network Solutions, Inc. in Herndon, Virginia, USA.
3. Procedural History
A Complaint was received by e-mail by the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on July 12, 2001.
On July 16, 2001, a Verification Response was received from Network Solutions which served to: (1) confirm that Network Solutions was in receipt of the notification of the domain name dispute; (2) confirm that Network Solutions is the registrar of the domain names; (3) confirm that Debra Bauer is the current Registrant of the domain names; and (4) provide the full contact details (i.e., postal address(es), telephone number(s), e-mail address(es)) available in the registrar�s WHOIS database for the Registrant of the disputed domain names, the technical contact, the administrative contact and the billing contact.
On July 24, 2001, a Formal Requirements Compliance review was completed by the assigned WIPO Center Case Administrator. The WIPO Center determined that the Complaint was not in formal compliance, and on July 17, 2001, transmitted to the Complainant a Request for Amendment to the Complaint. On July 19, 2001, the WIPO Center received an Amendment to the Complaint by e-mail.
Upon review of the Amendment, the WIPO Center determined that the amended Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999, (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999, (the "Supplemental Rules"). The required fees for a single member Panel were paid by the Complainant on time and in the required amount.
A Notification of Complaint and Commencement of Administrative Proceeding was sent by the WIPO Center to the Complainant (email) and Respondent (FedEx, fax email), dated July 25, 2001. The Notification set a deadline of August 14, 2001, by which the Respondent could make a Response to the Complaint. Due to an address error, as of August 3, 2001, Respondent had not yet received a hard copy of the Complaint, including the attachments. The parties therefore agreed to extend the deadline for a Response to the Complaint until August 31, 2001. Respondent submitted a Response on August 31, 2001.
On September 17, 2001, the WIPO Center sent the parties a Notification of Appointment of Administrative Panel naming Roderick Thompson as Panelist. Mr. Thompson submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the WIPO Center. The Projected Decision Date, as determined by the WIPO Center and transmitted to the parties on September 17, 2001, was October 1,2001.
On September 11, 2001, Complainant submitted a request to file a Reply to Respondent�s Response, along with a Reply to Respondent�s Response. On September 12, 2001, Respondent filed an opposition to Complainant�s request to file a Reply and requested the opportunity to file a Sur-Reply should Complainant�s Reply be accepted by the Panel. On September 19, 2001, the WIPO Center notified the parties that the Panel would accept the Reply and granted Respondent�s request to submit a Sur-Reply. The Projected Decision Date, as determined by the WIPO Center and transmitted to the parties was revised to October 15, 2001. On September 24, 2001, Respondent filed a Sur-Reply.
4. Factual Background
It is not seriously disputed that Complainant is the current owner of trademark registrations for THE HOUSE OF BAUER and BAVARIAN MINTS. (Respondent is "not challenging" Complainant�s trademark rights, asserting merely that the documentation "may or may not be authentic and may or may not demonstrate ownership of a trademark" (Sur-Reply p. 5). In October 1999, Commerce Bank, N.A. ("Commerce Bank") loaned money to Price Candy, the prior owner of these marks. The loan was secured by "general intangibles," including the rights in the marks. Price Candy defaulted on the loan. As a result, Commerce Bank foreclosed on the collateral, including the trademark rights. Complainant, Supreme Chocolatier, L.L.C., purchased the rights to THE HOUSE OF BAUER and BAVARIAN MINTS marks from Commerce Bank on August 17, 2000.
Respondent, Debra Bauer is the current Registrant of the disputed domain names. Respondent registered , , and on August 17, 1999, and registered on August 6, 2000. Members of Ms. Bauer�s family have been engaged in the candy business, although the details of that involvement are not clear. Ms. Bauer does not deny preexisting knowledge of the trademarks THE HOUSE OF BAUER and BAVARIAN MINTS. She does state that she is estranged from her grandfather�s side of her family, whom she understands was involved in the candy business.
5. Parties� Contentions
A. Complainant
Complainant contends that Respondent has registered domain names that are identical or confusingly similar to trademarks in which Complainant has rights. Complainant asserts that the absence of the work "THE" in Respondent's domain names is insignificant and unlikely to avoid confusion. Similarly, Complainant claims that the missing "S" in Respondent�s domain name is insignificant and unlikely to avoid confusion.
Complainant asserts that Respondent does not have a legitimate interest in the domain names because Complainant has not authorized Respondent to register or use a domain name incorporating Complainant�s trademarks. Further, Complainant asserts that Respondent is not using the disputed domain names in connection with a legitimate non-commercial or fair use of the disputed domain names. Complainant notes that Respondent has not established a web page at a site corresponding to any of the disputed domain names.
Although Respondent claims that her applications for trademark registration are evidence of a legitimate interest in the names, Complainant notes that the trademark applications were not filed until after Complainant requested that she transfer the disputed names. Further, Complainant asserts that because the trademark applications were filed as Intent to Use Applications, Respondent had not used the marks prior to the filing dates and thus had no rights in these marks.
Complainant claims that the domain names have been registered and used in bad faith by Respondent. According to Complainant, Respondent registered the disputed domain names in an apparent effort to fraudulently carve out and convert to Respondent's own use, a portion of the assets of Price Candy Company which had been pledged to Commerce Bank as security for a note. Complainant asserts that Respondent is related to one of the owners of Price Candy and that Respondent knew of the impending loan and corresponding security agreement between Price Candy and Commerce Bank. Complainant also asserts that Respondent knew that Price Candy owned the federal trademarks.
Complainant notes that Respondent registered the domain names only 6 weeks prior to the finalization of the loan between Price Candy and Commerce Bank and registered the domain name after Price Candy had defaulted on the Note and less than two weeks before the foreclosure sale by Commerce Bank to Complainant.
Upon learning that Respondent is estranged from her family that was involved in the candy business, Complainant notes that Respondent�s estrangement from her family provides an impetus for Respondent to damage her estranged family by registering domain names that are identical to her family�s marks. Complainant claims that Respondent knew her family had a candy business and the business had certain names or marks. Additionally, Complainant asserts that it cannot be a mere coincidence that Respondent chose not one, but two domain names which are identical to Complainant�s marks. Complainant claims that the marks were well known to Respondent.
Complainant also asserts as evidence of bad faith that Respondent has not used any of the domain names despite the fact that she registered the names almost two years before instigation of this dispute and registered the domain name almost one year prior to initiation of this dispute. Finally, Complainant claims that Respondent registered the domain names in order to prevent Complainant from using its marks. Complainant asserts that Respondent has engaged in a pattern of such activity by registering four domain names corresponding to Complainant�s marks.
B. Respondent
Respondent does not dispute that Complaint "has trademark interests in the marks" (Response p.5). She elsewhere alleges, however, that there is doubt as to Supreme Chocolatier�s trademark claims. Respondent points to the lack of affidavit or further authentication as a failure by Complainant to demonstrate its trademark rights. Respondent further asserts that while Supreme Chocolatier may have trademark rights, such rights are limited to use on candy products. Respondent also claims that Respondent has trademark rights in the domain names as a result of her pending U.S. trademark registrations.
Respondent further claims that the names are not confusingly similar to Complainant�s trademarks because Respondent offers distinct goods and services. Respondent claims that the names will be used in connection with her real estate services. Respondent notes that the domain name may present a "closer issue" but indicates that there is no actual or likelihood of confusion between Complainant�s Bavarian Mints trademark and Respondent�s domain name.
Respondent claims a legitimate interest in the domain names. She claims that she registered the domain names with the intent of using them in connection with her real estate business and for the possibility of forming an organic mint product business with friends. Further, Respondent asserts that she filed for trademark applications in connection with the domain names and that she has begun construction of her web pages. Ms. Bauer claims that she has been a real estate agent since 1996, and that she has sold approximately seven homes. She asserts that she is in the process of obtaining her real estate brokerage license and that she intends to use the domain names in connection with her real estate business once she has her broker�s license. She intends to use "or explore the possibility of using" the "Bavarianmint Crème" mark "with certain of my friends." (Bauer Affidavit, � 7).
Respondent asserts that she registered the domain names in good faith. Respondent claims that she did not know of Price Candy, Supreme Chocolatier, or Commerce Bank, did not know of any of the financial arrangements between the parties, and did not intend to defraud these parties. Respondent further asserts that non-use of a domain name is not necessarily evidence of bad faith.
Respondent indicates that she is not the daughter of the owners of Price Candy, as asserted by Complainant, but acknowledges that her grandfather was involved in the candy business. She indicates that she is estranged from her grandfather and her grandfather�s family and has no additional knowledge of his business activities.
Finally, Respondent asks the Panel to find that Complainant has engaged in reverse domain name hijacking. Respondent claims that Complainant knows that it has no interest in the mark THE HOUSE OF BAUER outside the field of candy and that the mark BAVARIAN MINTS, in addition to being a largely generic phrase, is limited in its protection to use on candy products.
6. Discussion and Findings
A. Consideration of Complainant�s Reply and Respondent�s Opposition to Reply and Sur-Reply
As noted in the procedural history, the Complainant submitted a request to file a Reply to Respondent�s Response, along with a Reply to Respondent�s Response. Complainant claimed that new factual allegations were raised in the Response that Complainant could not have addressed in its Complaint. Respondent submitted an Opposition to Complainant�s request and requested the opportunity to submit a Sur-Reply if Complainant�s Reply was accepted. In this situation, it is up to the Panel to determine whether or not the Reply and the Respondent�s Sur-Reply will be considered. In the interest of receiving full information, this Panel decided to consider all of the materials submitted, and allowed Respondent to file a Sur-Reply.
B. Applicable Rules and Principles of Law
Paragraph 15(a) of the Rules instructs this Panel as to the principles the Panel is to use in rendering its decision: "A Panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark in which the Complainant has rights; and,
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and,
(iii) that the domain name has been registered and used in bad faith.
C. Application of Paragraph 4(a) to the Facts
Identical or Confusingly Similar to Trademark
Complainant is required under Paragraph 4(a)(i) of the Policy to prove that the domain name is identical or confusingly similar to a trademark in which Complainant has rights. While Respondent asserts that Complainant has not proffered sufficient evidence of its rights in the trademark, the Policy does not require Complainant to provide authentication or to accompany the Complaint with an affidavit.
Complainant, Supreme Chocolatier, L.L.C., provided evidence that it has a U.S. Trademark registration for the marks THE HOUSE OF BAUER in connection with "candy" and BAVARIAN MINTS in connection with "mint candy." Complainant provided print outs from the "T" service evidencing the history of the trademarks in question. These print outs refer to reel and frame numbers of the assignment records of the U.S. Patent and Trademark Office (PTO) and show the assignment from Glico Harmony Foods to Price Candy, from Price Candy to Commerce Bank, and from Commerce Bank to Supreme Chocolatier. Further, Complainant provided the assignment document transferring rights in the name from Commerce Bank to Complainant which was stamped as received by the PTO as well as the Notice of Recordation from the PTO.
Complainant has provided copies of documents that evidence the chain of title along with copies of the trademark registration. Further, Respondent does not dispute Complainant�s trademark rights, but merely questions whether Complainant�s evidence is satisfactory. This Panel finds that Complainant provided sufficient evidence of trademarks rights for THE HOUSE OF BAUER and BAVARIAN MINTS.
The domain names , , and incorporate Complainant�s mark almost in its entirety, merely dropping the word "THE" from the beginning of the mark. Respondent argues that the domain names are not confusingly similar to the trademark in question because the domain names will be used in connection with different goods and services and thus consumers are not likely to be confused.
This element of the Policy does not ask whether there is any likelihood of confusion between the use of the domain name and the trademark, but instead looks at the more basic question of whether or not the domain name and the trademark are confusingly similar. Where additional words are added to the trademark and those words or terms distinguish the goods or services, the domain name may not be confusingly similar event if it incorporates the trademark. Thus, if Respondent had registered the domain name the distinction in goods and services and the addition of the term "realty" might have been sufficient to determine that the domain name is not confusingly similar to the trademark in which Complainant has rights. However, in this case, the domain name is merely missing the word "THE" and does not have any additional term or letters that might help to differentiate it from the trademark.
Similarly, the domain name incorporates Complainant�s mark almost in its entirety, merely dropping the "S" from the end of the mark BAVARIAN MINTS. Again, Respondent argues that there is no likelihood of confusion between the domain name and Complainant�s BAVARIAN MINTS trademark. Respondent does not provide any support for this argument.
Because the disputed domain names incorporate THE HOUSE OF BAUER mark and the BAVARIAN MINTS mark almost in their entirety and the names do not include any differentiating elements, this Panel finds that the domain names are confusingly similar to marks in which Complainant has rights.
Respondent�s rights and legitimate interests in the domain names
To succeed in its request for transfer, Complainant is required to prove that Respondent does not have any rights or legitimate interest in the contested domain names.
Respondent asserts a legitimate interest in the domain name in connection with a possible business endeavor to offer organic based chocolate covered mint food products with friends. Respondent acknowledges, however, that she has not made any concrete steps in establishing this possible business and her intent is to explore this possibility with friends at some unspecified time in the future. Further, Respondent does not address the concern of Complainant that Respondent would be offering a competing product using Complainant�s mark, and does not deny that her intent to explore the business idea postdated the filing of this Complaint. An unfulfilled vague and recently adopted plan to offer a competing product using a domain name almost identical to Complainant�s mark does not constitute a legitimate interest.
Respondent claims that she has a legitimate interest in the domain name based on her pending trademark application for the mark BAVARIANMINT CRÈME. However, Respondent did not apply for the trademark until after Complainant had sent her a letter informing her of Complainant�s trademark rights and requesting transfer of the domain name. Respondent acknowledges that the service mark application was made in Response to the Complainant�s assertion of trademark rights, explaining that it was a "no win" situation for Respondent. Either do nothing in Response to Complainant and face an argument that she has no trademark rights of her own, or take action to protect her asserted rights by filing a trademark application. (Sur-Reply, p. 6). While logical, Respondent�s argument is also a concession that the registrations were made in an attempt to strengthen her position to contest Complainant�s asserted trademark rights, and not for a commercial reason. Further, Respondent does not actually have trademark rights to the name. Her trademark application is an Intent to Use application, meaning that she has not yet used the name as a trademark and merely intends to do so in the future. While under some circumstances the filing of an Intent to Use application may serve as evidence of a legitimate interest in the name, the mere filing of an application after receiving notice of Complainant�s asserted trademark rights does not, by itself, constitute a legitimate interest.
The Panel therefore finds that Respondent does not have a legitimate interest in the domain name .
Respondent�s arguments regarding the domain names are more colorable. Respondent claims that she intends to use the domain names in connection with her real estate business. Respondent has applied for a U.S. trademark for House of Bauer in connection with real estate services. Respondent is a licensed real estate agent and is working towards becoming a licensed real estate broker. According to Respondent, as a real estate agent in California, Respondent may not sell houses using her own business name. However, as a licensed real estate broker, Respondent would be able to use her business name. Thus, Respondent claims that once she is a licensed real estate broker she will activate a website in connection with her real estate business using the domain names. Respondent indicates that the domain names are a natural selection given that her business is real estate and her last name is Bauer.
This is a close case. Respondent has provided evidence of a legitimate interest, but that evidence is mitigated by Respondent�s suspicious behavior and rather technical defenses. Respondent has seemingly not provided full information about her prior knowledge of her family�s connection to the candy business (and possibly the marks at issue) and instead has rested on sworn denials of many of Complainant�s accusations. The totality of circumstances has led this Panel to determine that Respondent acted in bad faith with regard to the domain name. This finding of bad faith has led the Panel to examine closely whether Respondent�s asserted interest in the domain names is legitimate. The evidence on that score is conflicting, and resolution would require credibility determinations that are better made in a court proceeding. In this summary proceeding, Complainant bears the ultimate burden of proof. Despite being allowed to file a reply, Complainant has not offered sufficient evidence�as opposed to allegations--to establish that Respondent�s interest in the names is not legitimate. Thus the Panel finds that Complainant has not carried its burden of showing that Respondent does not have any right or legitimate interest in the domain names.
Registration and use in bad faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant show that the domain names have been registered and used in bad faith. Because Complainant has not met its burden of demonstrating that Respondent does not have a legitimate interest in the domain names, the Panel will only address the issue of bad faith with regard to the domain name.
In this case, Respondent has not used the disputed domain name to resolve to a web page. Although the Policy requires bad faith registration and use, several of the examples of bad faith registration and use set forth in the Policy only directly include bad faith registration, not use. For instance, registration of the domain name primarily for the purpose of disrupting a competitor is listed as an example of bad faith registration and use. See 4(b)(iii). Further, registering the domain name in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name is evidence of bad faith use provided that the registrant has engaged in a pattern of such behavior. See 4(b)(ii).
While Respondent has not explicitly engaged in either of the two descriptions of conduct set forth above, Respondent�s behavior is reminiscent of a mix between the two. Respondent registered a domain name that is almost identical to a trademark of which she was apparently aware in order to, so she claims, offer a chocolate covered mint food product. Respondent�s proposed product seems to directly compete with the products offered by Complainant using the BAVARIAN MINTS trademark.
Further, Respondent has engaged in a pattern of registering the trademarks of Complainant. While Respondent may not have known the current trademark holder, Supreme Chocolatier, it appears that Respondent did know of the trademarks and knew that these trademarks were related to her estranged family�s business. Respondent submitted four separate filings disputing Complainant�s assertions regarding her knowledge of the entities involved, yet never disputed Complainant�s direct assertions that she knew of the marks.
The combination of these circumstances is quite suspicious.
This Panel therefore finds that Respondent has registered and used the domain name in bad faith.
D. Reverse Domain Name Hijacking
Respondent requests that the Panel find that Complainant attempted to reverse domain name hijack the domain names at issue. The Panel finds, however, that this is not a case of reverse domain name hijacking. Respondent�s behavior is suspicious. It does not seem probable that Respondent could have coincidentally registered domain names that correspond to two trademarks held by the same company, trademarks which apparently were originally held by her estranged family. Although this Panel has only found that Complainant met its burden with respect to one of the domain names, the evidence presented by Complainant was substantial. This Panel believes that in a different proceeding in which additional fact finding, such as discovery, is available, Complainant may have been able to prevail as to all four domain names. Thus, this Panel determines that Complainant has not engaged in reverse domain name hijacking.
7. Decision
This Panel decides that Complainant has not shown that Respondent has no legitimate interest in the domain names. Accordingly, pursuant to Paragraph 4(i) of the Policy, this Panel orders that the relief requested regarding the , , and domain names be denied.
This Panel decides that the domain name is confusingly similar to a trademark in which Complainant has rights, that Respondent has no rights or legitimate interests in the domain name, and that this domain name has been registered and used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, this Panelist requires that the registration of the domain name be transferred to Complainant.
Roderick M. Thompson
Sole Panelist
Dated: October 15, 2001
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