WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fannie May Confections, Inc. v. Spiral Matrix
Case No. D2006-0776
1. The Parties
The Complainant is Fannie May Confections, Inc., Chicago, Illinois, United States of America , represented by Kilpatrick Stockton, LLP, United States of America.
The Respondent is Spiral Matrix, of Kenya.
2. The Domain Names and Registrar
The disputed domain names, and , are registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2006. On June 22, 2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On June 23, 2006 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 for the administrative, billing, and technical contact.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“the Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 27, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July�17,�2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 18, 2006.
The Center appointed Tony Willoughby as the sole panelist in this matter on July�28,�2006. 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 a Delaware corporation with its principal place of business in Chicago, Illinois, Unites States of America. The Complainant is the current proprietor of the FANNY FARMER brand of confectionery dating back to the early part of the 20th century and the FANNIE FARMER brand of cookery books, which the Complainant claims to have launched in the mid-20th century.
The Complainant is the registered proprietor of numerous US trade mark registrations of or including the name FANNY FARMER for confectionery, the first of which dates back to 1919 and one US registration for FANNIE FARMER for cookery books dating back to 1992.
The Respondent registered the Domain Names on November 4, 2005 and March�25,�2006 respectively.
The Domain Names are connected to search engine and portal sites featuring sponsored advertisements for a variety of goods and services, the most prominent of which are for culinary goods and services. Some of the links refer to the Complainant’s goods and services but many do not.
The Complainant’s representatives wrote to the Respondent in March, April and May this year drawing the Respondent’s attention to the Complainant’s rights and seeking transfer of the Domain Names, but the Respondent did not respond.
According to the courier records supplied by the Center the Respondent refused to take delivery of the hardcopy version of the Complaint. The Respondent has not responded to the Complaint.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the Domain Names are identical or confusingly similar to trade marks in which it has rights and points to the trade mark registrations referred to above.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Names. The Complainant draws attention to the fact that the Complainant’s use and registration of its various trade marks far predate the first use by the Respondent of the Domain Names and asserts that not only is the Respondent deemed to have constructive knowledge of the Complainant’s registered rights, but that the Respondent must have had actual knowledge of those rights when registering the Domain Names. The Complainant also points to the use, which the Respondent is making of the Domain Names earning click-through revenue. The Complainant asserts that this is not a fair use. It is a commercial use depending for its commercial success upon tricking and diverting Internet users intending to visit the Complainant’s site.
The Complainant further contends that the Domain Names were registered and are being used in bad faith. The Complainant contends that when the Respondent registered the Domain Names it intended to derive a commercial benefit from the trickery referred to. In so doing the Respondent’s behaviour falls into the category identified in paragraph 4(b)(iv) of the Policy.
The site connected to the Domain Name, , features the slogan “Buy this Domain!” The Complainant contends that the Respondent registered this Domain Name with the intention of selling at a profit.
The Complainant further alleges that the fact that the Respondent registered two domain names confusingly similar to the Complainant’s trade marks indicates that the Respondent has engaged in a pattern of attempting to profit from selling or using domain names which trade on the goodwill of others.
The Complainant contends that it is plain that the Respondent is using and is intending to use the Domain Names to trade upon and profit from the Complainant’s goodwill in its FANNY FARMER brand.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. General
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names have been registered and are being used in bad faith
B. Identical or Confusingly Similar
The Domain Names each include as a principal element one or other of the Complainant’s word marks, FANNY FARMER and FANNIE FARMER, combined with a descriptive word apt to describe a feature of the Complainant’s field of activity.
The Panel finds that the Domain Names are each identical or confusingly similar to a trade mark in which the Complainant has rights.
C. Rights or Legitimate Interests
The Complainant asserts that the Respondent, an entity without any right or legitimate interest in respect of the Domain Names, registered the Domain Names with full knowledge of the Complainant’s rights and with the intention of trading on the back of the Complainant’s goodwill. The commercial benefit was to be derived either by selling the Domain Names at a profit or by deriving click-through revenue from the sites to which the Domain Names are connected.
The Domain Names are particularly distinctive and the Panel agrees that it is inconceivable that the Respondent can have registered the Domain Names without having been aware of the Complainant’s rights.
On that basis there is clearly a case for the Respondent to answer. However, the Respondent has elected not to answer.
In the particular circumstances of this case the Panel is prepared to infer that the Respondent has no answer to the Complainant’s prima facie case. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
D. Registered and Used in Bad Faith
The natural assumption has to be that the Respondent registered the Domain Names with the intention of trading on the back of the Complainant’s reputation and goodwill as the Complainant contends.
The Complainant has produced in evidence print-ups of the pages of the sites to which the Domain Names are connected and it is apparent that the sites are directory sites of the kind which provide click-through revenue to the domain name holder, the revenue being derived from Internet users visiting the sites, hoping to reach a site of or associated with the trade mark owner, and clicking on the sponsored advertising links appearing on the pages visited.
The Panel agrees with the Complainant that using a domain name in this way in circumstances where the domain name in question so obviously identifies the trade mark owner constitutes a deceit on Internet users within the meaning of paragraph 4(b)(iv) of the Policy. In the absence of any explanation from the Respondent the Panel so holds in relation to the Domain Names.
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 Domain Names, and , be transferred to the Complainant.
Tony Willoughby
Sole Panelist
Dated: August 10, 2006
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