WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Chocoladefabriken Lindt & Sprüngli AG v. Domain Hostmaster, Customer ID: 65382986726216, Whois Privacy Services Pty Ltd

Case No. D2016-2321

1. The Parties

The Complainant is Chocoladefabriken Lindt & Sprüngli AG of Kilchberg, Switzerland, represented internally.

The Respondent is Domain Hostmaster, Customer ID: 65382986726216, Whois Privacy Services Pty Ltd of Fortitude Valley, Australia.

2. The Domain Name and Registrar

The disputed domain name <whitmanschocolate.com> is registered with Fabulous.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2016. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 16, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 18, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 8, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 9, 2016.

The Center appointed Christian Schalk as the sole panelist in this matter on December 19, 2016. 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 Panel has reviewed the record and confirms the Complaint’s compliance with the formal requirements. The Complaint was properly notified to the Respondent in accordance with paragraph 2(a) and (b) of the Rules. The language of the proceeding is English.

4. Factual Background

The Complainant is a Swiss based corporation and a major manufacturer of premium chocolate. The Complainant sells chocolate products around the world. The Complainant has acquired the U.S. based company Whitman’s Candies in July 2014. Whitman’s Candies was founded in 1842 and sells high quality chocolate products in numerous countries under the trademark WHITMAN’S. Thus, the Complainant owns trademark registrations for WHITMAN’S in various countries such as the U.S., Italy and the Philippines. In Australia, where the Respondent apparently lives, the Complainant owns the following trademarks:

- Australian trademark registration No. 637053 for WHITMAN’S (word mark), registration date August 8, 1994, covering confectionery including candy in Int. Class 30;

- Australian trademark registration No. 641686 for WHITMAN’S SAMPLER BASKET OF FLOWERS & BIRD ON BRANCH (word & device mark), registration date September 27, 1994, covering goods in Int. Class 30;

- Australian trademark registration No. 637050 for WHITMAN’S SAMPLER (word mark), registration date August 8, 1994, covering confectionery including candy in Int. Class 30;

The Complainant owns also several domain names featuring the WHITMAN’S mark such as <whitmans.com.au>, <whitmans.com> and <whitmanscandies.com>. They all predate the registration of the disputed domain name which was on March 30, 2005.

On August 18, 2016, the Complainant sent a cease and desist letter to the Respondent where the Respondent was advised on the unauthorized use of the Complainant’s WHITMAN’S mark within the disputed domain name. The Complainant sent a reminder on August 29, 2016 to which the Respondent replied on August 30, 2016 that he would be willing to transfer the disputed domain name for USD 2.080. On September 2, 2016, the Complainant offered to buy the disputed domain name for USD 208.

Around the same time, the content of the website was changed and was redirected to a website where gambling services encouraged Internet visitors to join a millionaire lottery.

On November 18, 2016, the disputed domain name resolved to a website which featured links among others to “Candy Boxes”, “Candy Chocolate Store”, “Candy Buffet Ideas” and “Sugar Free Chocolate Candy.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the disputed domain name entirely incorporates the Complainant’s well-known registered trademark WHITMAN’S and the generic word chocolate which would be perceived by Internet users as descriptive of a website where they could find information about the Complainant’s business and products.

The Complainant alleges further that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant argues that the Respondent is not commonly known by the disputed domain name and that the Respondent has made no effort to use the disputed domain name for any purpose that might explain its choice in a manner consistent with having rights or legitimate interest in the name WHITMAN’S. The Complainant believes also that had the Respondent carried out a search for WHITMAN’S CHOCOLATE in the Google search engine, he would have easily learnt that WHITMAN’s is a trademark of the Complainant. Furthermore, the Complainant contends that the Respondent has neither used nor prepared any use of the disputed domain name in connection with a bona fide offering of goods and services. It was the Respondent’s intention to take advantage of an association with the business of the Complainant. The Complainant refers in this context to the website to which the disputed domain name resolves and argues that directing Internet users searching for information on the Complainant to a pay-per click websites does not provide a legitimate interest in the disputed domain name.

The Complainant alleges finally, that Respondent registered the disputed domain name in bad faith and is being used in bad faith. The Complainant contends that its company is in business since 1842 and that it is inconceivable that the Respondent was not aware of the existence of the Complainant’s trademark. Therefore, the Complainant believes that the Respondent’s purpose of registering the disputed domain name, which incorporates the Complainant’s trademark in its entirety, was, to capitalize on the reputation of the Complainant’s mark by diverting Internet users seeking chocolate products under the Complainant’s trademark to its own website, where consumers are likely to purchase various kind of products sold by competitors of the Complainant.

The Complainant sees a further reason for finding of bad faith in the behavior of the Respondent when the Complainant sent a cease and desist letter to the Respondent. According to the Complainant, the Respondent failed first to respond to the Complainant’s cease and desist letter. Then, as a reaction to the Complainant’s reminder, the Respondent offered the disputed domain name for sale for USD 2.080. When the Complainant made a counter offer to solve this conflict amicably, the Respondent did not reply.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established trademark rights in the trademark WHITMAN’S. The disputed domain name is not identical to the Complainants’ trademark. However, the Panel finds that the disputed domain name is confusingly similar to the Complainants’ trademark.

As it has been decided by previous UDRP panels, incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see for instance, Casa Editorial El Tiempo, S.A. v. Montanya Ltd, WIPO Case No. D2009-0103; Todito.com v. Francisco Gómez Ceballos, WIPO Case No. D2002-0717; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615; Compagnie Générale des Etablissement MICHELIN v. Lost in Space, SA, WIPO Case No. D2002-0504; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047).

Furthermore, in accordance with many decisions rendered under the Policy, the addition of descriptive terms to a trademark is generally not a distinguishing feature (see Bellsouth Intellectual Property Corporation v. Freeworld and/or Luis, WIPO Case No. D2000-1807; Bellsouth Intellectual Property Corporation v. Henry Chan, WIPO Case No. D2004-0550; Canon U.S.A. Inc., Astro Business Solutions, Inc. and Canon Information Systems, Inc. v. Richard Sims, WIPO Case No. D2000-0819; Aventis, Aventis Pharma SA. v. John Smith, WIPO Case No. D2004-0565; Aventis, Aventis Pharma SA. v. John Smith, WIPO Case No. D2004-0624; and Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002).

In this case, the word “chocolate” is a common term in the English language. This term is generally used to describe the material out of which the Complainant’s products are made of. Therefore, the addition of the term “chocolate” cannot avoid similarity nor does it add anything to avoid confusion with the Complainant’s trademark. The only distinctive element of the disputed domain name consists of the term “WHITMAN’S”, which is identical to the Complainant’s trademark.

In addition, the “.com” Top-Level Domain suffix in the disputed domain name does not affect the determination that the disputed domain name is confusingly similar with the WHITMAN’S mark in which the Complainant has rights (see also Compagnie Générale des Etablissements Michelin v. Trendimg, WIPO Case No. D2010-0484; Köstrizer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936; Laboratoire Pharmafarm (SAS) v. M. Sivaramakrishan, WIPO Case No. D2001-0615 and cases cited therein).

For all these reasons, the Panel finds that the Complainant has fulfilled the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Based on the submissions and materials filed in this case, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

It is the consensus view of UDRP panels that once the complainant has made out a prima facie showing on this element, the burden of production shifts to the respondent (see also paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”); Ustream.TV, Inc. v. Vertical Axis, Inc.,WIPO Case No. D2008-0598; mVisible Technologies, Inc v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.

The Respondent has not provided any evidence of circumstances specified in paragraph 4(c) of the Policy or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. Specifically, the Panel finds no evidence that the Respondent has been or is commonly known by the disputed domain name. The Respondent is neither affiliated with the Complainant nor has a license to use its trademark. The Respondent has also not rebutted the Complainant’s allegations and has not provided the Panel with any explanations as to the Respondent’s rights or legitimate interests.

Given the fact that the disputed domain name resolved to a website where links to candies or chocolate products were displayed, the Panel is convinced that the Respondent was aware of the Complainant when registering the disputed domain name and when it began using it. There is a strong likelihood that such links do not only lead Internet users searching for the Complainants products away from the Complainant’s website but probably also to websites where products are offered which are in competition with those of the Complainant. Furthermore, it cannot be excluded that the Respondent gains some income by each click on these links by Internet users. UDRP panels have generally recognized that use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a “bona fide offering of goods or services”. An example of such permissible use is, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue (see, for instance, Trade Me Limited v. Vertical Axis Inc., WIPO Case No. D2009-0093; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304 and Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964).

However, as it has been decided already by previous UDRP panels, that pay-per-click parking pages which are built around a trademark cannot constitute a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy, nor do they constitute a legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii), see Ustream.TV, Inc. v. Vertical Axis, Inc, WIPO Case No. D2008-0598; mVisible Technologies, Inc v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; Mobile Communication Service Inc v. WebReg, RN, WIPO Case No. D2005-1304; Gerber Products Co. v. LaPorte Holdings, WIPO Case No. D2005-1277; Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; Champangne Lanson v. Development Services/MailPlanet.com, WIPO Case No. D2006-0006; The Knot, Inc. v. In Knot we Trust Ltd., WIPO Case No. D2006-0340. This is the case here, where the disputed domain name incorporates a trademark owned by the Complainant and which resolves to a website where links to candies or chocolate products were displayed.

Therefore, the only reason for the Respondent to register the disputed domain name was, on balance, to capitalize on the Complainant’s goodwill by redirecting Internet traffic intended for the Complainant away from it to third parties’ websites. Such behaviour cannot constitute a bona fide or legitimate use of the disputed domain name.

For all these reasons, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and therefore, the requirement of paragraph 4(a)(ii) of the Policy is met.

C. Registered and Used in Bad Faith

The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Policy, paragraph 4(b) sets forth four non-exclusive circumstances, which evidence bad faith registration and use of domain names:

(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is 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 disputed 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.

According to the materials brought before the Panel, the Panel finds that the disputed domain name has been registered and is being used by the Respondent in bad faith in accordance with paragraph 4(b)(iv) of the Policy.

It is a principle considered under prior UDRP decisions (see, for instance, Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022) and under the Policy (see paragraph 2), that a domain name registrant represents and warrants to the concerned registrar that to its knowledge, the registration of the disputed domain name will not infringe the rights of any third party.

The Panel finds that the Respondent must have been aware of the Complainant’s trademark and its products when it registered the disputed domain name. Had the Respondent carried out even basic searches in search engines like Google or Yahoo in respect of “WHITEMAN’S” at the time it registered the disputed domain name, then these would have yielded obvious references to the Complainant and its use of the WHITMAN’S trademark. Furthermore, since the disputed domain name resolved to a website where links to candies or chocolate products were displayed, the Panel is convinced that the Respondent was aware of the Complainant when registering the disputed domain name.

The Panel finds further, that the Respondent is also using the disputed domain name in bad faith.

The use, to which the disputed domain name is put, namely a parking page featuring sponsored advertising links, is calculated to attract Internet users to the site in the mistaken belief that they are visiting a site of or associated with the Complainant. The object has to be commercial gain, namely pay-per-click or referral revenue achieved through the visitors to the site clicking on the sponsored advertising links. Even if visitors arriving at the website to which the disputed domain name resolves become aware that this website is not such of the Complainant, the operators of this website will nonetheless have achieved commercial gain in the form of a business opportunity, namely the possibility that a proportion of those visitors will click on the sponsored links (see also: Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320). Even if such advertising links served up to visitors on the website associated with the disputed domain name are automated, the Respondent remains responsible for such use (see also Rolex Watch U.S.A., Inc. v. Vadim Krivitsky, WIPO Case No. D2008-0396). However, since the Respondent redirected the disputed domain name to a website showing links to gambling services after receipt of the cease and desist letter and then again on chocolate products after September 2, 2016, the Panel is convinced that the Respondent had influence to which kind of website the disputed domain name resolved and the goods and serviced offered there. It does also not matter in this context, whether the Respondent itself or a third party reaps the profits from such products or services (see Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912) because the reason for such profits would be always the registration of the disputed domain name by the Respondent.

Therefore, the Panel is convinced that the Respondent’s main purpose was to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

The Respondent continued its bad faith use of the disputed domain name even after receipt of the Complainant’s cease-and-desist letter. The Respondent redirected the disputed domain name to another third party website where gambling services encouraged Internet visitors to join a millionaire lottery. After the Complainant’s email of September 2, 2016, where the Complainant offered the Respondent a certain amount of money as a compensation for transferring the disputed domain name to the Complainant, the Respondent continued this behaviour and directed the disputed domain name to a website where links to candies or chocolate products were displayed. Such behaviour is considered by the Panel as further evidence of bad faith (see in this context also News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623; see also Aktiebolaget Electrolux AB v. Domains by Proxy, Inc. / HSD LLC,Thomas Keith, WIPO Case No. D2010-0561).

Furthermore, the Respondent has apparently also provided inaccurate contact details when it registered the disputed domain name or failed at least to correct such false contact details. The Center has used the contact details given in the WhoIs record for the disputed domain name and those provided by the Registrar when it tried to contact the Respondent. However, the courier service provider could not reach the Respondent in order to deliver the Written Notice of the Complaint. Therefore, the Panel notes that the Respondent may have given incorrect contact details to frustrate or at least to delay this proceeding (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

Therefore, the disputed domain names were not only registered in bad faith for which the Respondent is responsible for but are also used in bad faith as set out in paragraph 4(b)(iv) of the Policy.

7. Decision

For 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 <whitmanschocolate.com> be transferred to the Complainant.

Christian Schalk
Sole Panelist
Date: January 2, 2017