Cadbury Adams Canada, Inc. v. JKHosting / Domains by Proxy, Inc.
Case No. D2008-0922
1. The Parties
The Complainant is Cadbury Adams Canada, Inc., Toronto, Canada, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is JKHosting, Hostville, California, United States of America ; Domains by Proxy.com, Scottsdale, Arizona, United States of America.
2. The Domain Name and Registrar
The disputed domain name <sourpatch.org>is registered with GoDaddy.com, Inc.
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2008. On June 18, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On June 19, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 23, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complaint filed an amendment to the Complaint on June 24, 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”).
3.2 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 June 26, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 16, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 17, 2008.
3.3 The Center appointed Mary Vitoria, Q.C. as the sole panelist in this matter on August 6, 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.
3.4 The language of the proceedings is English.
4. Factual Background
4.1 Because there has been no Response, the following facts are taken from the Complaint and, in the circumstances of this case, are accepted as true.
4.2 The Complainant is one of the world's leading manufacturers and marketers of confectionery. In 1985, the Complainant's predecessor introduced Sour Patch Kids, a chewy candy with a sour sugar coating into the United States of America. The candy became a staple of moviegoers and is the top selling sour brand candy in North America. The Complainant has expanded the brand to create Sour Patch Extreme and Sour Patch Xploderz, both of which were launched in 2007.
4.3 SOUR PATCH brand candies are sold throughout the United States of America and Canada. The products are sold at more than 100,000 stores, movie theaters and other outlets in the U.S. alone and more than 150,000 outlets worldwide. Since 2006 it is estimated that the Complainant's advertisements bearing the SOUR PATCH mark have reached more than 20 million people in the United States of America. In addition to traditional advertising, the Sour Patch products have been placed in various movies and television programs. For the period 2006 to 2007, Sour Patch Kids was the main sponsor of the ABC Family's hit show Kyle Xy. The product appeared in more than 14 episodes seen by an audience of more than 5 million viewers each week. Since 2005, the Complainant has spent in excess of $17 million to advertise and promote its Sour Patch candies worldwide. During that same period of time, its sales of Sour Patch candies in the U.S. alone exceeded $213 million in shipments and $285 million in measurable retail dollar sales.
4.4 The Complainant maintains several web presences in connection with its Sour Patch products, including at <sourpatchkids.com> which was launched on February 25, 1998; <sourpatch.com> which was launched on March 28, 1998; <sourpatchkids.ca>, which was launched on October 6, 2006; <sourpatch.ca>, which was launched on October 6, 2006; and <soursweetgone.com>, which was launched on May 22, 2007.
4.5 The SOUR PATCH brand has been licensed to appropriate third parties. The mark has been used under licence on cotton candy, pillows, notebooks, folders and stationery and there are plans to license the mark for placement on t-shirts, lip balm, and frozen confections.
4.6 The SOUR PATCH mark is registered in more than 18 jurisdictions around the world with some registrations dating back to 1991. The Complainant owns 6 registrations in the U.S. for SOUR PATCH or marks that include SOUR PATCH. Worldwide, the Complainant owns 27 registrations for SOUR PATCH marks all of which issued prior to the registration of the Domain Name. Details of the Complainant's worldwide registrations were annexed to the Complaint.
4.7 The domain name in dispute was created on December 2, 2007. The Complainant first discovered the Respondent's registration of the disputed domain name on April 29, 2008 via a Google search for Sour Patch which revealed a website “www.sourpatch.org” which resolved to an XXX-rated site. Subsequently the content was taken down. In its place, the Respondent posted a notice which recommended different pornographic sites and provided hot links to those sites. In addition, the Respondent advertised the domain name for sale through the website “www.sitepoint.com”.
4.8 On May 7, 2008, the Complainant sent demand letters to the Respondent via Site Point and using the email address on the WhoIs record. The Complainant received no response. On Friday May 9, 2008, the disputed domain name was removed from auction and the owner was identified by a WhoIs search as Domains by Proxy Inc. On June 19, 2008, GoDaddy.com, Inc. reaffirmed that the Respondent JK Hosting was the owner of the disputed domain name. The Panel is satisfied that it is appropriate in this case to regard JK Hosting as the appropriate Respondent.
4.9 Currently, the website “www.sourpatch.org” resolves to a cached page that links to and advertises other hard core pornographic websites.
4.10 The Complainant requested that the domain name in dispute <sourpatch.org> be transferred to the Complainant. By an email to the Center dated August 5, 2008, the Respondent stated that the Center might give the disputed domain name to the Complainant as he did not wish to deal with it any more.
4.11 Previous panels have held that a genuine unilateral consent to transfer by the Respondent provides a basis for an immediate order for transfer without consideration of the elements of paragraph 4(a) of the Rules. In the present case, however, the parties have not reached a formal settlement concluding the proceedings and the consent has not been expressed in a legally binding document.
4.12 In the circumstances, the Panel concludes that it is not appropriate to transfer the disputed domain name to the Complainant without determination of the elements of paragraph 4(a) of the Policy.
5. Parties' Contentions
A. Complainant
5.1 The Complainant asserted that its trademark registrations for the SOUR PATCH mark or marks that include SOUR PATCH were sufficient to establish its rights and cited the following cases in support: Charles Schwab & Co., Inc. v. Josh Decker d/b/a I GOT YOUR TIX,
WIPO Case No. D2005-0179; PHE, Inc. v. Bill McCall,
WIPO Case No. D2003-0516; Williams-Sonoma, Inc. v. Polanski,
WIPO Case No. D2001-0236.
5.2 The Complainant submitted that the domain name <sourpatch.org> was identical or confusingly similar to its SOUR PATCH registrations. The Complainant asserted that the disputed domain name incorporated in its entirety the Complainant's registered trademark SOUR PATCH and cited Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd.) v. Arthur Wrangle,
WIPO Case No. D2005-1105.
5.3 The Complainant asserted that the Respondent had no rights or legitimate interest in the domain name <sourpatch.org>. It submitted that, as a preliminary matter, since the Complainant's or its predecessor's adoption and extensive use of SOUR PATCH predated the registration of the disputed domain name, the burden was on the Respondent to establish his rights or legitimate interests in the domain name in dispute and cited PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor,
WIPO Case No. D2003-0174. It submitted that the Respondent could not establish any rights or legitimate interests. The Complainant further asserted that where, as here, the Complainant's SOUR PATCH mark was so well-known and recognized there could be no rights or legitimate use by the Respondent. In support, the Complainant referred to Nike, Inc. v. B. B. de Boer,
WIPO Case No. D2000-1397 and Viacom International Inc. v. MTVALBUMS – Mega Top Video Albums / Peter Mladshi,WIPO Case No. D2002-0196.
5.4 The Complainant stated that registration of the disputed domain name had occurred after the Complainant had made extensive use of the SOUR PATCH mark and after the Complainant had obtained over 25 registrations for SOUR PATCH marks worldwide. The Complainant contended that, given these facts, the Respondent clearly was on actual notice of the Complainant's rights before he adopted the Complainant's trademark as his domain name and relied on Charles Schwab & Co., Inc. v. Josh Decker d/b/a I GOT YOUR TIX,
WIPO Case No. D2005-0179 and Chanel, Inc. v. Buybeauty.com,
WIPO Case No. D2000-1126.
5.5 The Complainant asserted that the Respondent could not show any use or preparations to use <sourpatch.org> in connection with a bona fide offering of goods or services but instead used it for pornographic videos and to promote the Respondent's own pornographic websites as well as third party sites and sponsors.
5.6 The Complainant stated that there was no relationship between the Complainant and the Respondent that would give rise to any licence, permission or authorization by which the Respondent could own or use the domain name <sourpatch.org> and that the Complainant had never authorized the Respondent to use the SOUR PATCH mark, or any mark confusingly similar thereto, as a domain name or for any other purpose. The Complainant relied on Charles Schwab & Co., Inc. v. Josh Decker d/b/a I GOT YOUR TIX,
WIPO Case No. D2005-0179; Guerlain S.A. v. HI Investments,
WIPO Case No. D2000-0494.
5.7 The Complainant stated that there was no evidence to suggest that the Respondent had been or was commonly known by the domain name in dispute.
5.8 The Complainant asserted that, given that the Respondent had adopted and begun use of the disputed domain name decades after the Complainant had established its rights in the SOUR PATCH mark and that the Respondent was using the Complainant's mark to direct consumers to pornographic websites, there could be no legitimate interest or rights in the domain name in dispute and cited: Chinmoy Kumar Ghose v. ICDSoft.com & Maria Sliwa,
WIPO Case No. D2003-0248.
5.9 The Complainant contended that the Respondent lacked the right to use the Complainant's SOUR PATCH mark as part of the domain name in dispute since <sourpatch.org> suggested that the Complainant was or may be authorizing or sponsoring a website associated with that domain name or that the domain name is a means of contacting the Complainant and relied on: Motorola, Inc. v. NewGate Internet, Inc.,
WIPO Case No. D2000-0079.
5.10 The Complainant asserted that the Respondent had registered and used the domain name in dispute in bad faith.
5.11 The Complainant asserted that the pornographic content of the Respondent's website as it originally existed when the Complainant learned about it as well as the continued advertising and promotion of pornographic content and links to pornographic content established bad faith and cited Caesars World, Inc. v. Alaiksei Yahorau,
WIPO Case No. D2004-0513; ABB Asea Brown Boveri Ltd. v. Quicknet,
WIPO Case No. D2003-0215 and cases cited therein and Ty, Inc. v. O.Z. Names,
WIPO Case No. D2000-0370.
5.12 The Complainant contended that further evidence of the Respondent's bad faith was his attempt to auction the domain name in dispute for an undisclosed reserve price. The Complainant asserted that, in fact, the reserve price was higher than $800 and that it was evident that within 5 months of registering the domain name in dispute, the Respondent was offering to sell it to anyone who met his reserve price which was clearly higher than his expenses to obtain the domain name. The Complainant asserted that an attempt to sell a domain name through an auction site to the public at large for more than the Respondent's out of pocket costs for registering the domain name constituted bad faith and cited Reckitt Benckiser AG v. Nazim Oren,
WIPO Case No. D2002-0286; Laboratoire Pharmafarm (SAS) v. M. Sivaramakrishan,
WIPO Case No. D2001-0615.
5.13 The Complainant contended that the offering for sale of the disputed domain name violated paragraph 4(b) of the Policy. It said that by using a domain name identical to the Complainant's trademark in connection with a pornographic website and then using the traffic that was generated by the pornographic website to justify the sale of the domain name in dispute, the Respondent had intentionally attempted to attract for commercial gain Internet users to its website and had done so by trading off the Complainant's mark. Moreover, the Complainant said, by taking a trademark that was known to millions of children and using that trademark in a domain name that had explicit adult content, the Respondent clearly was attempting to tarnish the Complainant and disrupt the Complainant's business.
5.14 The Complainant asserted that the activities of the Respondent clearly pointed to bad faith use and registration of the disputed domain name and that it was hard to imagine a good faith reason for the Respondent's registration of the domain name in dispute given its use in connection with pornographic websites, its use to direct consumers to third party pornographic websites, its attempt to resell the domain name by auction and its constructive if not actual notice of the Complainant's marks in the SOUR PATCH mark.
5.15 The Complainant also asserted that further indications of the Respondent's bad faith were: (a) the fact that the Respondent had taken the Complainant's trademark SOUR PATCH as his domain name. (Charles Schwab & Co., Inc. v. Josh Decker d/b/a I GOT YOUR TIX,
WIPO Case No. D2005-0179); (b) the Respondent had never been authorized by the Complainant to use the SOUR PATCH mark (Heelquick, Inc. v. Michael Goldman & Barbara S. Goldman, NAF Case No. FA92527); (c) the Respondent's failure to respond to a demand letter (NFL Properties, Inc., et al. v. BBC Ab,
WIPO Case No. D2000-0147; Playboy Enterprises International Inc. v. BEG Service KB,
WIPO Case No. D2001-0494; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc.,
WIPO Case No. D2000-0090).
5.16 The Complainant further asserted that the Respondent's bad faith was further shown by the fact that the Respondent had provided non-existent address information in his registration record, provided fraudulent telephone contact information, and hid his registration information upon receiving the Complainant's demand letter. The Complainant stated that when the Complainant first found out about this matter, the Registrant of the disputed domain name was JKHosting and that subsequent to the Complainant's May 7, 2008 email demand letter to […]@gmail.com the Respondent modified his WhoIs record to an identity shield provided by Domains by Proxy, Inc., as reflected in a WhoIs printout dated June 16, 2008. The Complainant further stated that the address that had been provided in Hostville, California, did not exist and that when the Complainant called the telephone number supplied by the disputed domain name's unshielded WhoIs record, the woman who answered the telephone claimed to have no knowledge of or involvement with the domain name, and expressed concern about the possibility that her telephone number had been stolen. The Complainant further stated that the emails sent by the Respondent since Center's June 23, 2008 email were further evidence of bad faith and drew attention to the fact that in these emails the Respondent had admitted that he had sought to sell the domain name for an offer better than $500.
B. Respondent
5.17 The Respondent did not formally reply to the Complainant's contentions.
6. Discussion and Findings
6.1 According to paragraph 15(a) of the Rules, the Panel must decide a 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.
6.2 In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements are satisfied:
(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.
6.3 Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies on the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel may draw such inferences therefrom, as it considers appropriate.
6.4 Since the Respondent failed to respond substantively to the Complaint within the stipulated time, the Panel assumes that the Respondent admits, and does not contest, all the facts asserted by the Complainant in the Complaint. Upon careful review of the evidential materials submitted by the Complainant to support its contentions, the Panel finds the following:
A Identical or Confusingly Similar
6.5 The Respondent's domain name <sourpatch.org> incorporates the whole of the Complainant's trademark SOUR PATCH. The addition of a TLD to the mark does not avoid confusing similarity. See, e.g., F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,
WIPO Case No. D2006-0451; TelstraCorporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003; Sanofi-Aventis v. V. Link,
WIPO Case No. D2004-0810; and Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v Arthur Wrangle,WIPO Case No. D2005-1105. The generic top-level domain (gTLD) name “.org” is without legal significance since use of a gTLD is required of domain name registrants, “.org” is one of only several such gTLDs, and “.org” does not serve to identify a specific service provider or enterprise as a source of goods or services.
6.6 Furthermore, the incorporation of the entirety of the Complainant's trademark SOUR PATCH into the Respondent's domain name is likely to lead consumers familiar with the Complainant's SOUR PATCH product and trademarks into the belief that the disputed domain name belongs to the Complainant or that the Complainant has authorized or licensed the use of its trademarks to the Respondent. Consumers are also likely to be confused as to the origin or sponsorship of the Respondent's websites because the disputed domain name is identical or confusingly similar to the Complainant's trademark SOUR PATCH in which the Complainant has rights.
6.7 The Panel accepts the Complainant's submissions in relation to the disputed domain name and finds for the Complainant on the first element.
B. Rights or Legitimate Interests
6.8 There is no evidence of any rights or legitimate interest of the Respondent in the disputed domain name. The Complainant states that it has not licensed or otherwise permitted the Respondent to use the trademark SOUR PATCH or to apply for any domain name including this trademark. The Complainant has prior rights in the trademark SOUR PATCH which precede the Respondent's registration of the domain name in dispute.
6.9 It is not plausible that the Respondent devised the disputed domain name independently of and without knowledge of the Complainant's Sour Patch products and trademarks. Prior to registration of the disputed domain name, there had been extensive and widespread sales and advertising of the Complainant's Sour Patch products. There is no evidence that the Respondent was known by the disputed domain name and there does not appear to be any connection between the word “sourpatch” and the pornographic content or links available from the Respondent's website “www.sourpatch.org”. Given the extensive use and advertising by the Complainant it is highly implausible that the Respondent would be able to demonstrate a legitimate interest: Viacom International Inc. v. MTVALBUMS – Mega Top Video Albums / Peter Mladshi, WIPO Case No. D2002-0196.
6.10 The Panel accepts the Complainant's submissions that the Respondent does not have any rights or legitimate interests in respect of the disputed domain name. The Panel finds for the Complainant on the second element.
C. Registered and Used in Bad Faith
6.11 The Panel has already found that it is likely that the Respondent selected the domain name in dispute knowing of the reputation of the SOUR PATCH trademark. The prospect for confusion between the disputed domain name and the Complainant's trademark is clear. Accordingly, the Panel finds that the disputed domain name was registered in bad faith. See, e.g., America Online, Inc. v. Anson Chan,WIPO Case No. D2001-0004. In the present case, as other UDRP panels have found, registration of a confusingly similar domain name after the Complainant's product launch gives rise to an inference of bad faith. See, e.g., Medestea Internazionale S.r.l. v. Chris Gaunt,
WIPO Case No. D2003-0011; America Online Inc v. Chan Chunkwong,
WIPO Case No. 2001-1043; and Guardant, Inc. v. youngcho kim,
WIPO Case No. D2001-0043.
6.12 According to paragraph 4(b)(iv) of the Policy, the use of a domain name, with the intention to attempt to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on said website or location is regarded as evidence of bad faith.
6.13 The Panel is satisfied on the evidence that the Respondent knew of the Sour Patch products and of the Complainant's trademarks when he registered and used the disputed domain name. There is no apparent connection between the mark SOUR PATCH and the Respondent. The Panel draws the conclusion that the most likely reason the Respondent chose the domain name was to profit from the reputation and goodwill of the Complainant's trademark and thereby to attract Internet users to his website.
6.14 In addition, the use of the disputed domain name in connection with a pornographic website and the subsequent maintenance of links to third party pornographic sites is likely to tarnish the reputation of the Complainant's trademark SOURPATCH and thereby damage the Complainant's business: see, e.g., Caesar's World, Inc v. Alaiksei Yahorau,WIPO Case No. D2004-0513 and Ty, Inc. v. O.Z. Names,
WIPO Case No. D2000-0370.
6.15 The Panel accepts the Complainant's assertions that the Respondent had provided non-existent address information in his registration record, provided fraudulent telephone contact information, and hid his registration information upon receiving the Complainant's demand letter. The Panel is prepared to infer in the circumstances that the Respondent had attempted to hide his identity and that this constitutes further evidence that the registration and use of the domain name in dispute has been in bad faith.
6.16 Under paragraph 4(b)(i) of the Policy, the registration of a domain name primarily for the purpose of selling the registration to the complainant or to a competitor of the complainant for valuable consideration in excess of documented out-of-pocket costs is evidence of registration and use in bad faith. Since receipt of the Complainant's demand letter, the Respondent has attempted to sell by auction over the Internet the domain name in dispute for an undisclosed reserve price, but one higher than $800. There is no evidence, however, that the Respondent registered these domain name primarily for the purpose of selling them to the Complainant. Rather the Respondent's attempt to sell over the Internet appears to be a reckless opportunistic attempt to salvage something from the closure of his website. In the circumstances, the Respondent's offer to sell cannot be regarded, on its own, as evidence of bad faith.
6.17 Given the extensive use made by the Complainant of the trademark SOUR PATCH in relation to products which are bought every day by the man in the street (and his children), it is very difficult to imagine any use of the disputed domain name that would not violate the Complainant's rights, see, for example: Comerica Inc. v Horoshiy, Inc., WIPO Case No. D2004-0615 and Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028.
6.18 The Panel is satisfied that the Complainant has established the third element, namely that the Respondent registered and used the domain name <sourpatch.org> in bad faith.
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 <sourpatch.org> be transferred to the Complainant.
Mary Vitoria, Q.C. Sole Panelist
Date: August 20, 2008
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