WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Calphalon Corp. v. Benjamin Bertisch
Case No. D2007-1303
1. The Parties
Complainant is Calphalon Corp., Atlanta, United States of America, represented by Schiff Hardin LLP, United States of America.
Respondent is Benjamin Bertisch, Ra’anana, Israel.
2. The Domain Name and Registrar
Two of the disputed domain names, and , are registered with GoD, Inc. The third disputed domain name, , is registered with FastDomain, Inc. through BlueHost.Com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on August 31, 2007, naming as Respondent “Benjamin Bertisch (through Domains by Proxy, Inc. and BlueHost Inc.)”. On September 5, the Center transmitted by email its requests for registrar verification to GoDaddy. On September 7, 2007 the Center submitted a similar request to B (which some “whois” records identified as the registrar of the domain name).
On September 5, 2007, GoDaddy transmitted by email to the Center its verification response, which indicated that Benjamin Bertisch and not Domains by Proxy was listed as the registrant, provided contact information for the administrative and technical contacts, and confirmed several details of the registration agreement.
On September 11, 2007, BlueHost transmitted a response by email to the Center, which indicated that Benjamin Bertisch was listed as the registrant and provided contact information for the administrative and technical contacts. In response to the Center’s query regarding the applicability of the Uniform Domain Name Dispute Resolution Policy (“Policy”) to the domain name, BlueHost responded:
“We will assist and supply necessary information according to the dispute resolution policy.”
Subsequently, FastDomain, Inc. confirmed that it was the registrar of the domain name and that the domain name was subject to the Policy.
The Center verified that the Complaint, together with the amendment, satisfied the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“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 September 12, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 2, 2007. A Response was timely submitted by Benjamin Bertisch, purporting to be the authorized representative of an entity identified as “Affilisites Ltd.”
The Center appointed Debra J. Stanek as the sole panelist in this matter on October 19, 2007. 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 designs and has sold cookware under the CALPHALON trademark since 1965. It owns United States federal trademark registrations for the marks: CALPHALON, ONE, SIMPLY CALPHALON, and SIMPLY for cookware, bakeware, utensils, and similar items, as well as for related educational and retail services. It also owns Canadian trademark registrations for CALPHALON and CALPHALON ONE.
Complainant markets and sells its products through its “” website. Complainant also owns a domain name registration for “”, which directs visitors to its “” website.
Two of the disputed domain names, and , were registered on February 5, 2006. The third, , was registered on October 21, 2005.
5. Parties’ Contentions
A. Complainant
The disputed domain names are identical or confusingly similar to Complainant’s marks.
Complainant has used its CALPHALON mark since 1965 for a variety of cookware-related goods and services. In addition to its trademark registrations for the marks CALPHALON, SIMPLY CALPHALON, CALPHALONE ONE, SIMPLY, and ONE, it has registered “Calphalon” domain names, including for and .
The and domain names are identical to Complainant’s CALPHALON ONE and SIMPLY CALPHALON marks. The domain name is confusingly similar to Complainant’s CALPHALON mark because it simply adds the generic term “sets”, describing a set of cookware, to Complainant’s mark.
Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has not authorized or licensed Respondent’s use.
Respondent is not a reseller of Complainant’s goods, who might have some right to use Complainant’s marks in a domain name, because:
(1) Respondent does not sell Complainant’s goods, but simply provides links to a third party who sells them.
(2) Respondent does not use the websites only to sell Complainant’s goods; the sites provide links to a third party who also sells goods of its competitors.
(3) The websites do not accurately disclose Respondent’s relationship with Complainant. To the contrary, shortly before the Complaint was filed, the website used a banner that was almost identical to Complainant’s CALPHALON ONE logo, suggesting that the site is affiliated with Complainant.
Respondent has registered and is using the disputed domain name in bad faith because:
(1) Respondent has intentionally tried to attract visitors by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement of Respondent’s sites. Actual confusion has occurred, as evidenced by the fact that the Wikipedia entry for “Calphalon” cites the “www.” website.
(2) Respondent’s websites provide links to competitive products.
(3) Respondent continued to use the disputed domain names even after Complainant advised Respondent of its objection to the registration in early August 2007.
(4) Respondent is clearly aware of Complainant’s marks and rights in the marks: Complainant’s marks are famous and well-known, Respondent uses Complainant’s marks with the symbol “�”, and Respondent provides links to Complainant’s products.
(5) Respondent has a history of registering domain names that include the registered trademarks of others. Complainant provides evidence that a number of domain names, including and , appear to be registered by Complainant yet incorporate the registered marks of third parties.
(6) Respondent offered to sell the domain names to Complainant for more than his out-of-pocket costs. Complainant asserts that in a telephone call to its counsel, Respondent’s lawyer, “made it clear to Complainant’s counsel that Respondent wanted more than the costs of registration of the domain name—i.e., more than out-of-pocket expenses—to resolve the matter.”
(7) Respondent has attempted to conceal his identity. Originally, the “whois” records identified Domains By Proxy, Inc. as the registrant of the and domain names and BlueH Domain Privacy as the registrant of the domain name. Respondent’s lawyers have represented that an entity called “Affilisites Ltd.” owns the domain name registrations.
B. Respondent
The domain name is not identical or confusingly similar to Complainant’s marks. It includes Complainant’s name and mark, but also includes the generic term “sets” referring to sets of cookware manufactured by Complainant, correctly describing the nature of the site.
Respondent has rights or legitimate interests in the disputed domain names.
The websites connected with the disputed domain names are leading information sites for Complainant’s products and for information on the science of hard anodized and infused anodized technologies, and provide cooking tips and information on cookware care. The sites are intended to provide useful information for Calphalon customers and are not intended to confuse users. The websites are intended to act as “entry level sites” that provide the best information to consumers — as “fan sites” — through which potential customers pass through prior to being directed to affiliate merchants. The information presented is in many cases more comprehensive than that provided on Complainant’s own sites.
Respondent has invested substantial time and money in creating and developing the sites.
Each of the websites related to the disputed domain names are licensed affiliates of numerous Calphalon retailers. Visitors to the sites are referred to official retailers.
The sites are intended for sales of Complainant’s products; however, in some cases, competing products are displayed. Respondent is taking steps to address this.
Respondent has not registered and is not using the disputed domain name in bad faith because:
(1) Respondent’s affiliate program is a legitimate business that benefits the consumer, the affiliate, the merchant, and the manufacturer of the product.
(2) The similarity in “look and feel” of the sites to Complainant’s sites is due to the fact that the sites have the same subject matter.
(3) Respondent did not register the domain names for “cybersquatting” or with the intent of selling, renting, or otherwise transferring them to anyone for financial gain. In conversations with Complainant’s counsel, Respondent’s counsel advised that because Respondent believes that it has a legitimate claim to the registrations, it would consider selling the domain names, but for more than the $10 per domain name (to cover transfer fees) suggested by Complainant’s counsel.
(4) The fact that the sites have been referenced in Wikipedia entries does not prove confusion, but simply that the content of the sites merits the reference.
(5) Respondent asserts that “it is common practice to have unofficial sites supporting leading companies, products and brands which contain the original party’s trademark as part of the website name or domain.”
(6) Respondent’s websites do not disrupt Complainant’s business, but instead complement and promote Complainant’s interests.
(7) Respondent did not attempt to conceal his identity as an act of bad faith. Respondent used anonymous registration, as affiliate marketers frequently do, for reasons related to “search engine optimization.”
(8) Respondent indicated a willingness to include a disclaimer on its websites.
6. Discussion and Findings
A. Procedural Matters
(1) Identification of Respondent
The Complaint identified as the respondent, “Benjamin Bertisch (through Domains by Proxy, Inc. and BlueHost Inc.)”. Under the Rules, the “Respondent” is defined as “the holder of a domain-name registration against which a complaint is initiated.” See Rule 1, s.v. “Respondent.”
Based on the record, it appears that Domains By Proxy, Inc. was the registrant of record for and at the time the Complaint was filed. It also appears that “BlueHost.Com Domain Privacy” (the name of BlueHost Inc.’s privacy service, rather than “BlueHost Inc.” as stated in the Complaint) was the registrant of record for the domain name. The Panel does not find that the minor, technical correction regarding BlueHost has any substantive effect. It is clear that the appropriate persons received proper notice of these proceedings.
However, as Complainant had already discovered, the named “registrants” were acting as privacy services for the true holder of the domain names, Benjamin Bertisch. This was confirmed in the registrar verification process, in which each registrar confirmed that Benjamin Bertisch was the “registrant” for each of the three domain names.
For the purposes of this proceeding, the Panel considers Benjamin Bertisch as the Respondent.1
(2) Jurisdiction
The Complaint asserts that this dispute is within the scope of the Policy. Complainant has provided a copy of the Registration Agreement applicable to the and domain names and correctly stated that it incorporates the Policy and requires Respondent to submit to this proceeding.
Complainant has also provided a copy of the “Terms of Service” applicable to the domain name. The Complaint does not assert that that agreement incorporates the Policy; it does not. Nor does BlueHost’s response to the Center’s request for verification indicate that the Policy applies. As noted above, that response merely indicated that BlueHost would “assist” and “supply necessary information.”
The Panel notes that BlueHost is not an ICANN-accredited registrar. See Internic Accredited Registrar Directory, . BlueHost is a web hosting company that provides domain names through the ICANN-accredited registrar, FastDomain, Inc. See Internic “whois” lookup, .
The Panel is aware that the Rules define “Registration Agreement” as “the agreement between a Registrar and a domain-name holder,” see Rule 1, s.v. “Registration Agreement,” and define “Registrar” as “the entity with which the Respondent has registered a domain name that is the subject of a complaint.” See Rule 1, s.v. “Registrar.” Thus, although Complainant asserts that BlueHost was the registrar (as noted above, some “whois” records identified it as such) and its “Terms of Service” is the Registration Agreement, the Panel does not agree. Instead, the Panel relies on the representation of the ICANN-accredited registrar, FastDomain, that it is the registrar of the domain name; further, the FastDomain Registration Agreement available online does expressly incorporate the Policy. See . Therefore, the Panel concludes that the Policy applies to the domain name.
B. Burden of Proof
In order to prevail, Complainant must prove, as to each of the disputed domain names, that:
(i) The disputed domain name is identical or confusingly similar to Complainant’s mark.
(ii) Respondent has no rights or legitimate interests in respect to the disputed domain name.
(iii) The disputed domain name has been registered and is being used in bad faith.
Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a Respondent’s rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a Respondent’s bad faith registration and use, see Policy, paragraph 4(b).
(1) Identical or Confusingly Similar
Complainant has established its rights in the marks CALPHALON and SIMPLY CALPHALON by providing evidence of its trademark registrations.
Complainant has also established that two of the disputed domain names are identical to its marks. The and domain names are identical to, respectively, the CALPHALON ONE and SIMPLY CALPHALON marks. Replacing the space between the two words of each mark with a hyphen and adding the “.com” top-level domain are inconsequential changes that do not serve to distinguish the domain name from the corresponding mark.
The domain name is confusingly similar to the CALPHALON mark. The addition of a hyphen and the generic term “sets”, denoting a “set” of cookware, along with the “.com” top-level domain, are similarly inconsequential changes.
Accordingly, the Panel finds that the domain names are identical or confusingly similar to marks in which Complainant has rights.
(2) Rights or Legitimate Interests
The Panel, consistent with the consensus view, finds that Complainant may establish that Respondent has no rights or legitimate interests in respect of the domain names by making a prima facie showing that respondent lacks rights or legitimate interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1 (once complainant makes prima facie case, respondent has burden of showing rights or legitimate interests in the domain name).
Paragraph 4(c) of the Policy sets out the following examples:
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 Complainant has made a prima facie showing under Paragraph 4(c) and that Respondent has not established rights or legitimate interests in the domain names. Complainant’s evidence suggests (and Respondent does not contradict) that neither Respondent nor Respondent’s business is or could legitimately be known by the name “Calphalon.” See Policy, paragraph 4(c)(ii).
Complainant also submitted printouts of Respondent’s website that show use of the domain names for commercial purposes, and Respondent concedes that, in addition to providing information about Complainant’s products, the domain names are used to generate revenue through affiliate programs. See Policy, paragraph 4(c)(iii).
Whether Complainant has made a prima facie showing as to the example set out in Paragraph 4(c)(i) presents a slightly closer question. Complainant cites the decisions of other panels for the proposition that a “reseller” may have a right or legitimate interest in a domain name that includes the trademark of the goods being resold only under limited circumstances.
Here, Respondent is not really a “reseller”, instead, it uses its websites to provide information to visitors and redirect them to affiliates, who are resellers. Nonetheless, the Panel finds the majority view regarding the rights of resellers provides a useful analogy here. A reseller may have a legitimate interest in a domain name where: (1) the reseller actually offers the goods at issue, (2) the reseller uses the site to offer only the trademarked goods, (3) the site accurately discloses the relationship with the mark owner, and (4) the reseller has not tried to “corner the market” in domain names that reflect the mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.3. Respondent actually uses the sites to provide information about the goods at issue2 and to provide links to other sites where they may be legitimately purchased. Respondent does not use the sites only for the trademarked goods, but the Panel credits Respondent’s explanation that that is not intended by Respondent and that he is taking steps to eliminate those references. However, the Panel finds (and Respondent concedes) that the sites do not accurately disclose the relationship with the trademark owner, and in particular, the use of Complainant’s stylized logo along with the CALPHALONE ONE mark on the website strongly suggests that there is a relationship between Complainant and Respondent’s site.
Based on the foregoing, the Panel finds that Respondent does not have rights or legitimate interests in the domain name.
(3) Registered and Used in Bad Faith
Complainant must establish that each of the disputed domain names has been registered and is being used in bad faith. The Policy itself sets out four sets of circumstances, evidence of which can establish bad faith, see Policy, paragraph 4(b)(i)-(iv):
(1) Registering the domain name primarily to sell it for more than documented out-of-pocket costs, see Policy, paragraph 4(b)(i).
(2) Registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct, see Policy, paragraph 4(b)(ii).
(3) Registering the domain name primarily to disrupt the business of a competitor, see Policy, paragraph 4(b)(iii).
(4) Using the domain name to intentionally attempt to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement, see Policy, paragraph 4(b)(iv).
The Panel disagrees with Complainant’s suggestion that Respondent’s conduct falls within paragraph 4(b)(i) because there is no evidence that Respondent registered the domain names with any intent of selling them to third parties. However, the Panel agrees that Respondent’s conduct clearly falls within paragraph 4(b)(iv).
As noted above, the domain names are identical or confusingly similar to Complainant’s distinctive and well-known CALPHALON marks. Moreover, Complainant’s rights in the CALPHALON mark long predate Respondent’s registrations. It is evident, from the content of the websites, including reproduction of Complainant’s logo and use of the “�” symbol, that Respondent had actual knowledge of Complainant’s trademarks. Further, Respondent essentially concedes that he is using the domain names to intentionally attract visitors for commercial gain (he admits that the domain names are intended to identify “entry level sites” through which potential customers pass through prior to being directed to affiliated merchants) but denies that any confusion is intended. Further, the Panel finds disingenuous Respondent’s claim that the similar “look and feel” of his sites to that of Complainant is due their similar subject matter. The similar subject matter does not require use of Complainant’s federally-registered logo on the site.
Finally, the Panel also credits Complainant’s evidence that Respondent has engaged in a pattern of registering domain names that prevent a trademark owner from reflecting its mark in the corresponding name under paragraph 4(b)(ii).
Accordingly, the Panel finds that Complainant has established that the disputed domain names have been registered and are being used in bad faith.
7. Decision
For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that each of the disputed domain names, , and , be transferred to Complainant.
Debra J. Stanek
Sole Panelist
Dated: November 4, 2007
1 While the Response identifies the Respondent as “Affilisites Ltd.” and designates Benjamin Bertisch as its authorized representative, no evidence in the record establishes that Affilisites is the holder of the domain name registrations at issue.
2 The Panel does not accept Respondent’s characterization of the websites as informational “fan sites,” due to their obvious commercial purpose, which Respondent does not deny. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.5 (an active and non-commercial fan site may give rise to rights or legitimate interests).
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