Complainant is Chocoladefabriken Lindt & Sprüngli AG of Kilchberg, Switzerland, represented by Sandel, Løje & Partnere, Denmark.
Respondent is Ideas unboxed of Mill Park, Victoria, Australia. 2. The Domain Names and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2013. On June 24, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 24, 2013, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on July 1, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 21, 2013. Respondent sent an email communication to the Center on July 20, 2013, but Respondent did not submit any formal response by July 21, 2013.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on July 25, 2013. 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 is a major international manufacturer of premium chocolate, with a global presence and various subsidiaries. Based in Switzerland, Complainant sells chocolates around the world under its registered LINDT mark. Complainant owns many registrations for the word mark for LINDT as well as iterations of design marks for it, internationally, including in Australia, where Respondent lists its address of record, Australian Registration Nos. 991295 (registered in 2004), 991293 (registered in 2004), and 991297 (registered in 2004).
Complainant’s 2011 Annual Report lists revenues of over CHF 2.4 billion globally in 2011, and even slightly higher in prior years. Due to extensive use, advertising, and revenue associated with its LINDT mark worldwide, Complainant enjoys a high degree of renown around the world, including in Australia.
Complainant also owns various registrations for domain names that include its registered LINDT mark, including , which it registered on December 16, 1997; (registered November 19, 2001); (registered August 1, 2001); (registered February 28, 2000), and others, including with country code Top Level Domains. Complainant uses these domain names to connect to a website through which it informs potential customers about its LINDT mark and its products and services. Complainant refers to some of its product stores around the world as its Lindt “boutiques.” References are made to this in Complainant’s Annual Report made of record in this proceeding.
The disputed domain name was registered on December 5, 2011. Respondent has no affiliation with Complainant. Respondent has the URL set to a parked web page, with sponsored links. Complainant has not authorized any activities by Respondent, nor any use of its trademarks thereby. 5. Parties’ Contentions A. Complainant
Complainant contends that (i) is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith. B. Respondent
Respondent did not file a formal response to the Complaint. However, the Center received the following email from the administrative contact, K. Kaptan, “[…]@”, dated July 20, 2013:
Dear […],
Please note that this email is without prejudice.
I really need your help/advice with this matter.
I don’t understand why I have to give up my domain, Lind T Boutique, I can see now that it can easily be mistaken for Lindt but that wasn’t the intention. I purchased the domain name a couple of years ago as a gift for my daughter who had just turned one, her name is Tiana, our background is Albanian so in our language “Lind T Boutique” stands for “Tiana’s boutique is born”. The intention is for it to become a childrens online books and clothing store.
I would like to hold on to the domain but cannot afford to pay any of the legal fees that might come with it, what should I do?
Thank you in advance for your help 6. Discussion and Findings A. Identical or Confusingly Similar
This Panel must first determine whether is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name directly incorporates Complainant’s well-known, registered trademark LINDT, and merely adds the descriptive word “boutique.” The Panel finds that the added word would be perceived by Internet users as descriptive of a website where they could find information about Complainant’s well-known boutiques that sell its LINDT products.
Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example, Microsoft Corporation v. Step-Web,WIPO Case No. D2000-1500 (transferring ); General Electric Company v. Recruiters,WIPO Case No. D2007-0584 (transferring ); CBS Broadcasting, Inc. v. Y2K Concepts Corp.,WIPO Case No. D2000-1065 (transferring ).
This Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the disputed domain name in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “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”.
Respondent has indicated in Ms. Kaptan’s July 20 email that she intends to use the domain name to set up a website for “children’s online books and clothing.” She also indicates that the domain name is “Lind T boutique.” However, Respondent provides no documentation whatsoever that in fact they have taken any steps to use the domain name for the reasons noted, nor that it has the meaning they state. Furthermore, Ms. Kaptan has not provided any showing that she or her daughter is “known by” the domain name such as might create rights or legitimate interests, nor has she provided a valid translation. Accordingly, the panel cannot give her email much credence. Rather, this Panel finds that Respondent has taken a well-known trademark and capitalized on its value by attaching it to a parked webpage, in a way that does not create rights or legitimate interests. See paragraph 2.6 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 2.0”). As such, the Panel finds that Complainant has set forth a prima facie case that Respondent lacks rights or legitimate interests, and despite Ms. Kaptan’s email, Respondent has failed to rebut that case. C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that a domain name was registered and is being used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] web site or location”. As noted in Section 4 of this Panel’s decision, Respondent has set up a parked webpage at the URL associated with the disputed domain name, with sponsored links, presumably for Respondent’s own commercial gain. See Chocoladefabriken Lindt & Sprüngli AG v. Domain Magic, LLC,WIPO Case No. D2007-0461 (transferring ).
Furthermore, considering the high degree of renown of Complainant’s LINDT marks around the world, including Complainant’s use of the word “boutique”, which is incorporated in the disputed domain name, it may be presumed that Respondent was aware of Complainant’s rights in Complainant’s marks when registering the disputed domain name. Accordingly, this too, evidences bad faith by Respondent.
Therefore, this Panel finds that Respondent has registered and is using the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy. 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 Complainant.
Lorelei Ritchie
Sole Panelist
Dated: August 8, 2013
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