The Complainant is Sugarfina IP, LLC, United States of America (“United States”), represented by Troutman Pepper, United States.
The Respondent is Siva Dharmaraj, Lolli and Pops, United States.
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2021. On August 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 25, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 27, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 27, 2021.
The Center verified that the Complaint, together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 22, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 23, 2021. On the same day, the Respondent sent an email message to the Center stating the Respondent will be “releasing the domains by next week.” On October 7, 2021, a second email was received by the Center sent from the Respondent which stated, “All Domains have been released. Please let Sugarfina know to feel free to claim them back.” On October 13, 2021, the Center confirmed with the Registrar that the disputed domain names remained locked. On October 14, 2021, the Center advised the parties that if the parties wished to explore settlement options, the Complainant may submit a request to suspend the proceeding. The Center did not receive any further communications from the Complainant or the Respondent.
The Center appointed William F. Hamilton as the sole panelist in this matter on November 1, 2021. 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 BackgroundThe Complainant is an international luxury candy boutique that has been in business since 2012. The Complainant has received numerous industry awards including the “Chain Store Age Breakout Retailer” award, the “Association of Corporate Growth Market Disruption” award, and “Fast Company’s 50 Most Innovative Companies” award.
The Complainant operates a website at the domain
The Complainant owns the following registrations with the United States Patent and Trademark Office for the mark SUGARFINA (the “Mark”):
- Reg. No. 4,405,745, dated September 24, 2013,
- Reg. No. 4,677,276, dated January 27, 2015,
- Reg. No. 5,602,424, dated November 6, 2018,
- Reg, No. 5,433,600, dated March 27, 2018,
- Reg. No. 5,822,347, dated July 30, 2019.
The Complainant also owns registrations for the Mark in many jurisdictions around the world.
The Respondent registered the disputed domain names on August 11, 2021, and the disputed domain names resolve to websites displaying pay-per-click (“PPC”) links.
5. Parties’ Contentions A. ComplainantThe Complainant asserts the disputed domain names are confusingly similar to the Mark because the disputed domain names are each created by adding the dictionary term “candy” to the Complainant’s Mark. The Complainant further asserts the Respondent has no legitimate rights or interests in the Mark or the disputed domain names as there is no evidence of any legitimate business activity of the Respondent prior to registration and use of the disputed domain name. Further, the Complainant asserts that the Complainant has not authorized the use of the Mark by the Respondent. The Complainant also asserts the disputed domain names were registered and used in bad faith.
B. RespondentThe Respondent did not formally respond to the Complaint, notwithstanding the above referenced emails sent to the Center by the Respondent on September 23, 2021, and October 7, 2021.
6. Discussion and FindingsUnder paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Panel finds that the disputed domain names are confusingly similar to the Complainant’s Mark.
The disputed domain names are composed by adding the term “candy” to the Complainant’s Mark. A domain name which wholly incorporates a complainant’s mark or prominent and distinctive portions thereof, is sufficient to establish confusingly similarity for the purposes of the Policy irrespective of any added terms. Nokia Corp. v. Nokiagirls.com a.k.a. IBCC,WIPO Case No. D2000-0102. Accordingly, the presence of the term “candy” in the disputed domain does not avoid a finding of confusing similarity. See generally WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 (“where the relevant trademark is recognizable with the disputed domain name, the additions of other terms (whether descriptive, geographic, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”).
The varying Top-Level Domains (“TLDs”) of the disputed domain names, in this case “.com”, “biz”, “net”, and “org”, may be disregarded for the purposes of assessment under the first element, as the TLD is viewed as a standard registration requirement. See WIPO Overview 3.0, section 1.11.1. Monster Energy Company, a Delaware Corporation v. J.H.M. den Ouden,WIPO Case No. D2016-1759; Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd,WIPO Case No. D2006-0762.
B. Rights or Legitimate InterestsThe Complainant has specifically disavowed providing the Respondent with permission to use the disputed domain names or the Mark. There is no evidence that the Respondent has conducted any bona fide business under the disputed domain names or is commonly known by the disputed domain names. The Complainant has established a prima facie case in its favor, which shifts the burden of production on this point to the Respondent. PepsiCo, Inc v. Amilcar Perez Lista d/b/a Cybersor,WIPO Case No. D2003-0174. The Respondent, however, has failed to come forth with any evidence showing any rights or legitimate interests in the disputed domain names despite the Respondent’s email messages to the Center.
The disputed domain names consist of the Complainant’s trademark in its entirety, along with the term “candy”, which is descriptive of the goods provided under the Complainant’s trademark. Accordingly, the nature of the disputed domain names is such to carry a risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0. Moreover, the websites to which the disputed domain names resolve consist of PPC links that capitalize on the Complainant’s goods and services, which cannot constitute a bona fide offering. See section 2.9 of the WIPO Overview 3.0.
The facts and circumstances presented to the Panel demonstrate that the Respondent does not have any rights or legitimate interests in the disputed domain names. The Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithUnder paragraph 4(b) of the Policy, bad faith may be established by any one of the following non-exhaustive scenarios:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on the respondent’s website or location.
The Panel finds the disputed domain names were registered and are being used in bad faith.
A simple Internet search, normally undertaken before registering a domain name, would have disclosed the Complainant’s Mark. Myer Stores Limited v. David John Singh,WIPO Case No. D2001-0763. The Mark is well known and distinctive, especially in the candy industry. The disputed domain names incorporate the Mark entirely with the obvious intent by the Respondent of suggesting to any Internet user that the disputed domain names resolve to a website offering products sponsored by the Complainant. It is notable that the term added to the Mark to compose the disputed domain names is “candy”, which is precisely the category of products sold by the Complainant. Common sense compels the conclusion that the Respondent was quite aware of the Complainant’s well-known Mark when registering and using the disputed domain names.
The Respondent’s knowledge of the Complainant’s Mark and business is beyond disputed. In 2017, attorneys for the Respondent filed a request for an extension of time to file an opposition to the Complainant’s application to register a trademark. The Respondent abandoned that opposition, but the Respondent’s opposition extension request clearly establishes the awareness by the Respondent of the Mark, which also appears in the name of the Complainant. The Respondent, who also appears to be in the candy sales and distribution business, subsequently registered and used the disputed domain names that prominently feature the Complainant’s Mark.
The disputed domain names have been used to host websites featuring PPC links that capitalize or compete with the Complainant’s services (i.e., “Cakes”, “Baking Supplies”, “Edible Fruit”, “Cotton Candy”) and through which the Respondent presumably receives click-through revenue. Considering the construction of the disputed domain name, as noted above, it is clear to the Panel that the Respondent has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant's Mark as to the source, sponsorship, affiliation, or endorsement of the disputes domain names.
The Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names
William F. Hamilton
Sole Panelist
Date: November 14, 2021