WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Malley's Candies Inc. v. Texas International Property Associates - NA NA Case No. D2008-1803 1. The Parties
The Complainant is Malley's Candies Inc, Cleveland, Ohio, United States of America, represented by Calfee, Halter & Griswold, United States of America.
The Respondent is Texas International Property Associates- NA NA, Dallas, Texas, United States of America, represented by Law Office of Gary Wayne Tucker, United States of America. 2. The Domain Names and Registrar
The disputed domain names and are registered with Compana LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2008. On November 24, 2008, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the disputed domain names. On December 1, 2008, Compana LLC transmitted by email to the Center its verification response confirming that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 3, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 23, 2008. The Response was filed with the Center on December 23, 2008.
The Center appointed William F. Hamilton as the sole panelist in this matter on January 14, 2009. 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 has been in the business of selling chocolates, candies, and ice cream since 1935. Complainant operates 17 retail stores and sells chocolates and candies through the website “”.
Complainant owns the following United States trademark registrations and applications (collectively “the marks”):
U.S. Reg. No. 3,235,571 for MALLEY'S CHOCOLATES. Complainant received U.S. trademark registration number 3,235,571 on May 1, 2007 for the mark MALLEY'S CHOCOLATES in International Class 30 for “candy” with a date of first use of January 1970.
U.S. Reg. No. 3,190,569 for MALLEY'S. Complainant received U.S. trademark registration number 3,190,569 on January 2, 2007 for the mark MALLEY'S in International Class 30 for “candy” with a date of first use of January 1970.
U.S. Reg. No, 34,190,570 for MALLEY'S. Complainant received U.S. trademark registration number 3,190,569 on January 2, 2007 for the mark MALLEY'S in International Class 43 for “restaurant services” with a date of first use of January 1999.
U.S. Trademark Application No. 76/689,466 for MALLEY'S CANDIES. Complainant filed U.S. Trademark Application No. 76/689.466 on May 9, 2008 for MALLEY'S CANDIES in International Class 43 for “restaurant services.”
Ohio State Trade Name Registration No. 1025084 for MALLEY'S CHOCOLATES. Complainant received Ohio Trade Name Registration No. 1025084 on July 24, 1998 for the trade name MALLEY'S CHOCOLATES.
Respondent registered the disputed domain name on January 4, 2005, and registered the disputed domain name on December 13, 2005. 5. Parties' Contentions A. Complainant
The Complainant asserts that the disputed domain names are identical or confusingly similar to its marks. The disputed domain names are composed by alternatively omitting an “s” from the first or second word of Complainant's MALLEY'S CHOCOLATES mark. Complainant asserts that Respondent has no rights or legitimate interest in the disputed domain names. Respondent is not a licensee of Complainant, the disputed domain names are not criticism or gripe sites, and the disputed domain names were registered long after the Complainant began using the marks.
Complainant asserts the disputed domain names were registered and being used in bad faith to attract unsuspecting Internet users. The disputed domain names resolve to landing pages consisting of links to websites offering for sale competitive candy and chocolate related products and services for which Respondent receives a “click through” fees. B. Respondent
Respondent “agrees to the relief requested by the Complainant” and requests the Panel to “order the immediate transfer of the disputed domain name.” Respondent, however, asserts that the offer to transfer the disputed domain names is not an admission but a “unilateral consent to transfer.” Should the Panel determine to proceed to the merits, Respondent requests “the opportunity to prepare a more formal response.” 6. Discussion and Findings
The Panel must first address Respondent's request to issue an immediate transfer of the domain names without reaching the merits of the Complaint. The Panel declines to do so. The record reflects an email from Complainant's counsel to Respondent asserting that “Malleys must be vigilant in protecting and enforcing its intellectual property rights.” Respondent replied with an email asserting Respondent's “legal department” would respond in 15-21 days. On January 11, 2008, Complainant again wrote to Respondent indicating that no response had been received as promised and that Respondent would initiate a UDRP proceeding if a response was not received by January 21, 2008. No response was ever received from Respondent, and Complainant ultimately commenced this proceeding. Respondent's offer now to transfer the disputed domain names “if ordered by the Panel” is too late to avoid a determination on the merits. Schering-Plough Corporation v. Texas International Property Associates, WIPO Case No. D2008-1557. Additionally, Respondent's request for a further opportunity to respond on the merits is denied. Respondent has had its opportunity to contest the Complainant's proofs and should have done so in its Response.
Turning to the merits, under paragraph 4(a) of the Policy, Complainant must prove each of the following:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and is being used in bad faith.
Complainant must carry its burden of proof by a preponderance of evidence. Bootie Brewing Company v. Deanna D. Ward and Grabebootie Inc., WIPO Case No. D2003-0185. A. Identical or Confusingly Similar
The Panel finds disputed domain names are confusingly similar to Complainant's marks. With the exception of a deleted letter “s” in each case, the disputed domain names are identical to Complainant's MALLEY'S CHOCOLATES mark which has been in use since at least 1970. Even limiting Complainant's trademark rights to the distinctive MALLEY'S mark, the addition of the generic word “chocolate” or “chocolates” to the MALLEY'S mark (with or without the “s”) is insufficient to avoid a finding of confusing similarity.
Complainant has established the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out in particular, but without limitation, three circumstances which, if proved by respondent, shall be evidence of respondent's rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii), namely:
(i) before any notice of the dispute to respondent, respondent's use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and 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 Complainant has made a prima facie showing of a lack of Respondent's rights or legitimate interests in the mark. The disputed domain names were registered long after Complainant established its common law rights in the marks and had registered the MALLEY'S CHOCOLATES mark with the State of Ohio. The Response makes no effort to demonstrate any rights or legitimate interests the disputed domain names. According the Panel determines Complainant has sufficiently demonstrated that Respondent lacks any rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to complainant who is the owner of the trademark or service mark or to a competitor of complainant, for valuable consideration in excess of respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) respondent has registered the domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that respondent has engaged in a pattern of such conduct; or
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent's website or other on-line locations, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of respondent's website or locations or of a product.
The disputed domain names resolve to landing pages showing numerous links to websites offering chocolate and candy products in competition with Complainant. The Respondent is not in the business of offering such products, but receives fees when such links are clicked. The composition of the disputed domain names by the deletion of the letter “s” from one or the other of the two words of Complainant's MALLEY'S CHOCOLATES mark evidences an intent to trade upon the goodwill and reputation of Complainant's mark. Further, the failure of Respondent to promptly transfer the disputed domain names when contacted by Complainant while promising a response from the “legal department” (which was never presented) strongly suggests that Respondent intended to benefit from click through revenues for as long as possible. Schering-Plough Corporation v. Texas International Property Associates, WIPO Case No. D2008-1557. According, the Panel determines the disputed domain names were registered and are being used in bad faith. 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.
William F. Hamilton
Sole Panelist
Dated: January 26, 2009
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