WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Chocoladefabriken Lindt & Sprüngli AG v. Lenawoo Case No. D2009-0382 1. The Parties
The Complainant is Chocoladefabriken Lindt & Sprüngli AG of Kilchberg, Switzerland, represented by Mayer Brown LLP of Germany.
The Respondent is Lenawoo of Bangkok, Thailand. 2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2009. On March 24, 2009, the Center transmitted by email to OnlineNic, Inc. d/b/a China-C a request for registrar verification in connection with the disputed domain name. On March 25, 2009, OnlineNic, Inc. d/b/a China-C 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 April 9, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 29, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 1, 2009.
The Center appointed David Stone as the sole panelist in this matter on May 8, 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 owns the Ghirardelli Chocolate Company (“Ghirardelli”) of San Leandro, California, which is reputed in the United States and other countries for fine chocolate and other products. The Complainant is the owner of numerous trademark registrations for GHIRARDELLI and GHIRARDELLI CHOCOLATE in connection with goods including chocolate in numerous countries around the world. The earliest of these registrations was recorded in the United States of America in 1925.
The Respondent registered the disputed domain name on June 30, 2008. 5. Parties' Contentions A. Complainant
1. Domain name is confusingly similar to a trademark in which the Complainant has rights
a. Complainant's rights
The Complainant asserts that in 1998 it acquired Ghirardelli. Ghirardelli was incorporated in 1852 and has been in continuous operation since that time. Ghirardelli's branded product lines include premium chocolate products. Ghirardelli also operates chocolate shops across the United States.
The Complainant asserts that it and Ghirardelli use and promote the GHIRARDELLI trademark worldwide in connection with high quality chocolate products, as a result of which the GHIRARDELLI trademark is widely recognised as indicating the products of the Complainant and Ghirardelli. Ghirardelli uses the GHIRARDELLI trademarks under license from the Complainant.
As a result, the Complainant asserts that it has rights in the trademarks GHIRARDELLI and GHIRARDELLI CHOCOLATE.
b. Confusing similarity
The Complainant asserts that the disputed domain name is confusingly similar to the Complainant's registered trademarks GHIRARDELLI and GHIRARDELLI CHOCOLATE, differing from the Complainant's registered trademark GHIRARDELLI by one letter, the omitted second “r”.
Furthermore, because “chocolate” is merely descriptive of the chocolate products sold under the GHIRARDELLI trademark, the Complainant asserts that the addition of “chocolate” to “ghiradelli” in the disputed domain name does not lessen the confusing similarity to the Complainant's mark GHIRARDELLI; indeed it increases it.
2. Respondent has no rights or legitimate interests in respect of the disputed domain name
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name because the Complainant has not granted the Respondent any license or otherwise permitted the Respondent to use the trademarks GHIRARDELLI or GHIRARDELLI CHOCOLATE.
The Complainant also asserts that for the following reasons the Respondent has no legitimate interest in respect of the disputed domain name:
a. No bona fide use
The Respondent does not make, has not made nor has undertaken demonstrable preparations to make use of the disputed domain name in connection with a bona fide offering of goods or services. The Respondent is using the disputed domain name to redirect Internet users to a “parking site” or “landing site” which provides links to active commercial websites referring to GHIRARDELLI as well as to some of its direct competitors. The Respondent is seeking “click-through commissions” from diverted Internet users who were seeking to reach the Complainant's or Ghirardelli's website.
b. Not commonly known by the domain name
The Respondent is not commonly known by the disputed domain name and the Respondent does not own any trademarks or any other type of rights in GHIRARDELLI or GHIRARDELLI CHOCOLATE.
c. No non-commercial or fair use of the domain name
The Respondent is not making a legitimate non-commercial or fair use of the disputed domain name. It is evident that the Respondent is seeking “click-through commissions” from those diverted Internet users who were seeking to reach the Complainant's or Ghirardelli's website.
3. Registered in bad faith
The Complainant asserts that the disputed domain name was registered and is being used in bad faith because the Respondent is using the disputed domain name intentionally to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's marks.
The Complainant asserts that the Respondent's website displays numerous links to the active websites of third parties, some of which are competitors of the Complainant or Ghirardelli. The Complainant asserts that the Respondent is profiting from customers' initial confusion and is exploiting the Complainant's trademarks for commercial gain by obtaining click-through commissions when Internet users click on the links contained in the Respondent's website.
The Complainant asserts there can be no reasonable doubt that the Respondent was aware of the Complainant's well-known trademarks GHIRARDELLI and GHIRARDELLI CHOCOLATE at the time it registered the disputed domain name. The Complainant bases this assertion on its evidence of longstanding registered trademark protection in over 20 countries worldwide, all with priority over the disputed domain name.
The Complainant further asserts that there are numerous references at the website displayed at the disputed domain name to GHIRARDELLI CHOCOLATE and even to Ghirardelli. The Complainant asserts this is an indication of the fact that the Respondent was aware of the Complainant's and Ghirardelli's businesses and products when the disputed domain name was registered and used. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each and all of the following three elements in order to prevail in this proceeding:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four situations under which the registration and use of a domain name is deemed to be in bad faith. This list is not exhaustive, and a panel may consider other circumstances as constituting registration and use of a domain name in bad faith. A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the Complainant's registered trademarks GHIRARDELLI and GHIRARDELLI CHOCOLATE.
The disputed domain name differs from the distinctive element (“GHIRARDELLI”) of the Complainant's marks by the omission of a single letter the omitted second “r”. The addition of the descriptive term “chocolate” to the registered term GHIRARDELLI does not serve to distinguish the disputed domain name from the Complainant's registered trademark. Instead, the Panel finds that the addition of the term would likely lead Internet users to believe that the disputed domain name relates to the chocolate products sold under the Complainant's GHIRARDELLI trademark.
The Panel finds that the Complainant has established element 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interest in the disputed domain name through its assertions that the Respondent: is not affiliated with or related to the Complainant; is not licensed by the Complainant or otherwise authorised to use the Complainant's trademarks; is not generally known by the domain name at issue; has not acquired any trademark rights in the name; and is not making a bona fide fair use of the domain name.
The Respondent did not exercise its right to respond in these proceedings, and, thus, has failed to rebut the prima facie case made by the Complainant. There is nothing in the Respondent's name (Lenawoo) or location (Thailand) which purports any connection with “Ghiradelli Chocolate”.
The Panel therefore finds that the Respondent lacks any rights or legitimate interests in the disputed domain name, and, accordingly, finds that the condition of paragraph 4(a)(ii) has been satisfied. C. Registered and Used in Bad Faith
The Panel finds that paragraph 4(b)(iv) of the Policy is also satisfied, that is that by registering and using the disputed domain name, the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation or endorsement of the Respondent's website. The disputed domain was therefore registered and is being used in bad faith.
In addition to the inferences to be drawn from the Respondent's default in this proceeding, the Panel draws an inference that the Respondent was well aware of the Complainant's trademarks, evidenced by the fact that: it combined the descriptive word “chocolate” with a word confusingly similar to the Complainant's mark GHIRARDELLI; the website to be found at the disputed domain name predominantly contains links to third party websites regarding chocolates; and that some of these links go through to the websites of competitors of the Complainant. This latter fact makes it clear to the Panel that the purpose of the Respondent's website is to obtain click-through revenue from unsuspecting Internet users seeking chocolate products in relation to the Complainant's trademarks (see e.g. Lancôme Parfums et Beauté et Compagnie, Laboratoire Garnier et Compagnie, L'Oreal SA, L'Oreal USA Creative v. Therese Kerr, WIPO Case No. D2008-1748).
The Panel therefore finds that the disputed domain name was registered and is being used in bad faith, and, accordingly, finds that the condition of paragraph 4(a)(iii) has been satisfied. 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 name be transferred to the Complainant.
David Stone
Sole Panelist
Dated: May 14, 2009
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