The Complainant is Perfetti Van Melle Benelux BV, of Netherlands, represented by Perfetti Van Melle S.p.A., Italy.
The Respondent is Ingrid Rooda, of Texas, United States of America.
2. The Domain Name and Registrar
The disputed domain name <fruitella.biz> is registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2008. On April 29, 2008, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On May 13, 2008, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 14, 2008. The Center verified that the Complaint together with the amendment to 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 May 19, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 8, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 9, 2008.
The Center appointed The Honourable Neil Anthony Brown QC as the sole panelist in this matter on June 23, 2008. 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 is a Dutch company that has been engaged since the 1950s in the manufacture of candies and other food products under the famous FRUITTELLA brand. The products are made largely from fruit and are widely promoted as such. The FRUITTELLA brand has become well known throughout the world.
The Complainant is the owner of many international trademark registrations and applications for FRUITTELLAas aword and/or a device, covering mainly products of international class 30 and used in particular on candies. Among the trademarks of which it is the registered owner are the following:
(a) Trademark for FRUITTELLA registered with the United Kingdom Patent Office on June 7, 1956; and
(b) Trademarks registered numbers 2787946 and 3015819 for FRUITTELLA registered with the United States Patent and Trademark Office respectively on December 2, 2003 and November 15, 2005.
According to the WhoIs search result annexed to the Complaint, the Respondent registered the domain name <fruitella.biz> on July 11, 2005.
5. Parties’ Contentions
A. Complainant
The Complainant alleges that the domain name <fruitella.biz> should no longer be registered with the Respondent, but that it should be transferred to the Complainant.
It contends that this should be done because, within the meaning of paragraph 4 of the Policy, the domain name is confusingly similar to the Complainant’s registered trademark, that the Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to the Complainant.
In support of its case on the first of these three elements, the Complainant relies on the registered FRUITTELLA trademarks to which reference has already been made. It then says that it is self-evident that the domain name <fruitella.biz> is confusingly similar to the FRUITTELLA mark, as the spelling of the word in the domain name is virtually the same as the spelling of the word in the trademark and that the only variation is the omission in the domain name of a single letter‘t’ that is in the trademark.
The Complainant then contends, to establish the second element, that the Respondent has no rights or interests in the domain name because the facts show an obvious intention by the Respondent to benefit from the reputation of the well known FRUITTELLA mark by registering the disputed domain name, a domain name that is very similar to the trademark and which may be used to promote goods similar to those of the Complainant without incurring any advertising or promotional costs. Furthermore, it is argued that that the Respondent is not named “Fruittella” or “Fruitella” and that it has not been authorized to use the FRUITTELLA name or mark. Nor, it is argued, can the Respondent bring herself within any of the provisions of paragraph 4(c) of the Policy.
Finally, the Complainant contends that the domain name was registered and is being used in bad faith. It contends that this is so because the Respondent must have been aware of the existence of the FRUITTELLA mark and could only have chosen the domain name to attract visitors to her website which promotes products similar to those of the Complainant and contains links to other websites that do the same.
It is therefore submitted that consumers might think there was a link between the Complainant’s products and those being promoted under the banner of the disputed domain name. The Complainant contends that these factors show that the Respondent both registered and has used the domain name in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In that regard, the Panel also notes that the fact that the Respondent has not made a submission does not avoid the necessity of examining the issues and of doing so in the light of the evidence. The onus remains on the Complainant to make out its case and past UDRP panels have said many times that despite the absence of a submission from a respondent, a complainant must nevertheless show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.
However, as the Panel will illustrate later, it is possible to draw inferences from the evidence that has been submitted and in some cases from silence. Indeed, paragraph 14 of the Rules incorporates both of those notions into the procedures of the Panel.
The Panel therefore turns to discuss the various issues that arise for decision on the facts as they are known.
For the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, 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.
It is to be noted that paragraph 4 of the Policy provides that the Complainant must prove that each of the three elements is present. The Panel will therefore deal with each of these requirements in turn.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the FRUITTELLA marks. The spelling of the domain name is virtually the same as that of the mark and all that has been done to create the domain name is to omit a single letter ‘t’ from the trademark FRUITTELLA. Otherwise the word remains the same. It has been held in numerous WIPO UDRP proceedings such as National Association of Professional BaseballLeagues, Inc., d/b/a Minor League Baseball v. John Zuccarini,
WIPO Case No. D2002-1011 and Caterpillar Inc. v. Spiral Matrix/ Kentech, Inc. /Titan Net / NOLDC, Inc,WIPO Case No. D2006-0808, and GS Development Aktiebolag, Aimpoint Aktiebolag v. Aimpiont.com c/o Whois IDentity Shield/GS Development AB, WIPO Case No. D2007-0629, that such minor spelling discrepancies do not negate confusing similarity which is otherwise present, which it is in the present case.
The domain name also consists of the gTLD suffix ‘.biz’. In that regard, it has been held many times that suffixes of this sort may not be used to negate a finding of confusing similarity that is otherwise present on the evidence, as it is in the current case.
The Complainant has therefore made out the first element that it must establish.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain name.
But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [respondent] of the dispute, your 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; or
(ii) you [respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [respondent] are making a legitimate non-commercial 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.
Thus, if the Respondent proves any of these elements or indeed anything else that shows she has a right or interest in the domain name, the Complainant will have failed to discharge its onus and the Complaint will fail.
The Panel’s task in deciding if a registrant has any rights or legitimate interests in a domain name is made more difficult when, as in the present case, the registrant is in default and does not file a Response. The Respondent was given notice that she had until June 8, 2008, to send in her Response, that she would be in default if she did not do so and that, by virtue of paragraph 14 of the Rules, the Panel might draw appropriate inferences from that default.
It is also well established that, as it is put in the Overview of WIPO Panel Views on Selected UDRP Questions (‘the Overview’) that “…a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.
The Panel, after considering all of the evidence in the Complaint and the exhibits attached to it, finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the domain name.
That finding is based on the facts that the Respondent chose for her domain name a name virtually identical to the Complainant’s famous trademark, that the domain name was registered many years after the Complainant had established the name “Fruittella” in the international market, that the Complainant has never given the Respondent permission to use its trademark in a domain name or anywhere else and that the Respondent has linked the domain name to a series of websites promoting goods that might well appear to consumers as having been produced by the Complainant as they are essentially fruit products.
The Respondent has not sought to rebut this prima facie case by way of a Response or other submission and hence cannot be said to have rebutted the prima facie case against her.
The Panel therefore concludes that the Respondent has no rights or legitimate interests in the domain name and the Complainant has made out the second of the three elements that it must establish.
C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith: Telstra Corporation Limitedv. Nuclear Marshmallows,
WIPO Case No. D2000-0003.
Further guidance on how to implement this requirement is to be found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which shall be evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances are:
(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 registration 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, respondent has intentionally attempted to attract, for commercial gain, internet users to 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 respondent’s website or location or of a product or service on the site or location.
The Complainant submits first, that the Panel should draw the inference that the Respondent registered the domain name in bad faith and that such an inference should be drawn from the following facts and circumstances: that the Complainant has never had any connection, affiliation or commercial relationship with the Respondent, that the Respondent has never approached the Complainant to inform it of her intention to register the disputed domain name or to ask for consent to its registration and that the Respondent chose for her domain name a name that is so similar to FRUITTELLA that she should be presumed to have intended to use the name to attract consumers to her own website which promotes products that might well be confused with those of the Complainant.
The Panel accepts this submission and concludes that the Respondent registered the domain name in bad faith.
As to whether the conduct of the Respondent shows that she has also used the domain name in bad faith, the Panel finds that this conclusion is reached from an examination of the evidence.
The Complainant has exhibited to the Complaint some extracts from the Complainant’s own website, namely “www.fruittella.com”, can be seen from these extracts that the Complainant promotes its products as being made from “all the goodness of fruit that nature has to offer...” and that some of its products are based on “garden fruits” and “summer fruits.”
The Complainant has also exhibited to the Complaint some extracts from the website to which the disputed domain name resolves, namely “www.fruitella.biz”. It can be seen in turn from these extracts that the Respondent’s website openly promotes an extensive series of products such as fruit, fruit juice, office fruit and fruit machine games.
The close connection between these products and the products made under the FRUITTELLA trademark, namely that they all have the common ingredient of fruit, makes it more probable than not that at least some consumers would think that the products were the Complainant’s products or associated with it in some way.
Accordingly, the Panel finds that the conduct of the Respondent in the above regard brings the case squarely within the provisions of paragraph 4 (b)(iv) of the Policy and shows that the Respondent is using the domain name in bad faith.
The Respondent has therefore registered and used the domain name in bad faith and the Complainant has thus made out the third of the three elements that it must establish.
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 name <fruitella.biz> be transferred to the Complainant.
The Honourable NeilAnthony Brown QC Sole Panelist
Dated: July 2, 2008
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