cadburyschweppes.info

Cadbury Schweppes plc v. MTS, Rueben Rivera

Case No. D2003-1012

The Complainant is Cadbury Schweppes plc, of London, United Kingdom of Great Britain and Northern Ireland; represented by Cogent IPC Ltd., London, United Kingdom of Great Britain and Northern Ireland.

The Respondent is MTS, Rueben Rivera, of Puerto Rico, United States of America.

The disputed domain name <cadburyschweppes.info> is registered with Network Solutions, LLC.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December  19, 2003. On December  22, 2003, the Center transmitted by email to Network Solutions LLC, a request for registrar verification in connection with the domain name at issue. On December  29, 2003, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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  30, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was January 19, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 23, 2004.

The Center appointed Dimitris Oekonomidis as the sole panelist in this matter on February 9, 2004. 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.

The deadline for the Panel to forward its decision to the Center was initially February 23, 2004. Nevertheless, due to a delay in the transfer of the case file (by courier) to the Panel the respective deadline was extended by the Center to March 5, 2004.

The Complainant is one of the best known producers and distributors of beverage and confectionery in the world. Its present form (that is, Cadbury Schweppes plc) is the result of the merger of Cadbury Limited and Schweppes Limited, that took place in 1969.

In its previous incarnations the Complainant obtained many trademark registrations for CADBURY and SCHWEPPES. Specifically:

(Annex G: copies of the relative registration certificates)

Due to the Complainant’s use, advertisement and promotion of the CADBURYSCHWEPPES and CADBURY and SCHWEPPES names and marks, the names have gained wide recognition when used in connection with various products and services related to cocoa, cocoa products, chocolates, confectionery, milk products, beverages, and soft drinks, and when used in connection with a wide variety of other products and services as indicating high quality products and services originating from the Complainant.

The name, CADBURY SCHWEPPES, has been used by the Complainant in commerce and has acquired a secondary meaning in connection with the Complainant, giving rise to unregistered common law trademark rights. The CADBURYSCHWEPPES name has become so well known, particularly when used in connection with beverages and confectionery as to be considered a famous mark.

On February 24, 2002, the Respondent registered the domain name at issue.

The Complainant contends that the significant part of the domain name, that is, "cadburyschweppes", is identical to a combination of the Complainant’s CADBURY and SCHWEPPES trademarks. Also the Complainant asserts that the domain name at issue is identical to its CADBURYSCHWEPPES unregistered common law trademark.

Further the Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name at issue. According to the Complainant, before any notice to the Respondent of the dispute, there is no evidence of the Respondent’s 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. The Respondent as an individual, business, or other organization has never been commonly known by the domain name. The Respondent is not making a legitimate non-commercial or fair use of the domain name and it has no trademark rights whether registered or unregistered in the CADBURYSCHWEPPES name. The Respondent has not been authorized in any way, whether by licence or otherwise to register or use the domain name by the Complainant.

The Complainant asserts that the Respondent has registered the domain name in bad faith. The Respondent first registered the domain name in February 2002, that is, long after the Complainant had established rights in the CADBURYSCHWEPPES mark. Given the well-know character and wide-spread use of the Complainant’s mark in pervasive consumer goods, the Respondent had actual or implied knowledge of the Complainant’s marks as he knew or ought to have known of the Complainant’s trademark and products at the time it registered the domain name (Annex I: Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137). Further, according to the Complainant, although the Respondent has not yet attempted to sell the name to the Complainant, implicit in his registration is the intention to profit from the name by selling it. Given the reputation of the CADBURYSCHWEPPES mark, the Respondent must have been fully aware of the Complainant’s CADBURYSCHWEPPES mark and its reputation at the time of his registration of the name and could have had no good intention except to sell the names to the Complainant. Given the long use and well-known character of Complainant's mark, Complainant was the most likely purchaser (if not the only likely purchaser) of the domain name. (Annex J: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

The Complainant contends that the domain name at issue is used in bad faith by the Respondent. The fact that the Respondent did not use the domain name as a URL for a website in itself can still be use in bad faith. (Annex K: Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No. D2000-0003), Compaq Computer Corporation v. Boris Beric,( WIPO Case No. D2000-0042), and Red Bull GmbH v. Harold Gutch, (WIPO Case No. D2000-0766)) the above three cases, which have all recognized that use of a domain name may include passive holding of the domain name, even if the website has not been activated). Further, the Complainant submits that the Respondent’s failure to respond to its offer of amicable settlement (Annex E: "Cease and Desist" letter dated September  23, 2003 from the Complainant to the Respondent. Annex F: undertaking accompanying the C&D letter) is either evidence of bad faith use and intentions, or evidence that Respondent provided incorrect contact details in the registration. Were Respondent to have had good intentions, he would have responded, either to explain his rights in the name or to comply with the request to transfer the name. (Annex L: Mars, Incorporated v. Vanilla, Ltd. (WIPO Case No. D2000-0586). Moreover, the Complainant contends that due to the fact that at the time of the Respondent’s registration of the name, the ".info" gTLD was in introduction phase and the Complainant was prevented from registering the name, the Respondent registered the name in order to prevent the Complainant, who is the owner of the trademarks, from reflecting the mark in a corresponding domain name.

The Respondent did not reply to the Complainant’s contentions.

Paragraph 4(a) of the Policy requires the Complainant to prove that:

(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) provides for the implication of evidence of bad faith in a number of circumstances:

(i) circumstances which indicate that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) registration of 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) registration of the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s 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 website or location or of a product or service on the website or location.

These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.

(Policy, para. 4(a)(i), Rules, paras. 3(b)(viii), (b)(ix)(i))

The domain name at issue is identical or confusingly similar to a combination of the CADBURY and SCHWEPPES trademarks, as well as, to CADBURYSCHWEPPES unregistered common law trademark, in which the Complainant has rights.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i).

(Policy, para. 4(a)(ii), Rules, para. 3(b)(ix)(2))

Since the adoption and extensive use by the Complainant of the trademarks (registered or unregistered) and names CADBURYSCHWEPPES and CADBURY and SCHWEPPES predate the first entry of <cadburyschweppes.info> as domain name, the burden is on the Respondent to establish the Respondent’s rights or legitimate interests the Respondent may have or have had in the domain name.

A respondent is not obliged to participate in a domain name dispute proceeding, but its failure to do so can lead to an Administrative Panel accepting as true the assertions of a complainant which are not unreasonable and leaves the respondent open to the legitimate inferences which flow from the information provided by a complainant.

In this case, the Respondent neither has been authorized by the Complainant nor has independent rights to use the CADBURYSCHWEPPES name or to register the domain name at issue. The Respondent does not own any registered or common law marks containing the term "cadburyschweppes." The Respondent has not conducted any prior business under the name CADBURYSCHWEPPES in connection with the bona fide offering of goods and services. The Respondent has not been commonly known by the subject domain name either as an individual or a business. The Respondent is not making any legitimate non-commercial or fair use of the contested domain name. The objective of the registration appears to have been to profit from the name by selling it.

All the above support a clear inference that the Respondent does not have a legitimate interest in the subject domain name and the Respondent has done nothing to rebut that inference.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii).

(Policy, paras. 4(a)(iii), 4(b), Rules, para. 3(b)(ix)(3))

To support bad faith, the Complainant relies on essentially the same facts upon which it relies to establish the other ingredients of its case.

A finding that a respondent does not have a legitimate interests in a domain name which is confusingly similar to the mark of a complainant does not automatically lead to a conclusion of bad faith, but the facts which support the finding generally are relevant to the inquiry.

The context of the registration and the (non) use of the subject domain name by the Respondent, taking into consideration the strong fame and wide-spread use of the Complainant’s mark, the business activities the Complainant has carried on, the failure of the Respondent to respond to the Complainant’s attempt to make contact, are facts which constitute evidence from which an inference of bad faith may be made. The Respondent has done nothing to rebut that inference.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(iii).

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Administrative Panel concludes that the Complainant has established its case.

The Complainant asks that the contested domain name < cadburyschweppes.info> be transferred to it. The Administrative Panel so orders.