The Complainant is Tony’s Factory B.V., Netherlands, represented by Vondst Advocaten N.V., Netherlands.
The Respondent is c/o whoisproxy.com, United States of America (“United States”) / Director Galib Gahramanov, G Domains, Azerbaijan.
The disputed domain name <tonychocolonely.com> is registered with Key-Systems GmbH (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2019. On May 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 20, 2019, the Registrar 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 May 20, 2019 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 May 21, 2019.
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 May 23, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 12, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 16, 2019.
The Center appointed Lorenz Ehrler as the sole panelist in this matter on June 28, 2019. 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 Complainant, Tony’s Factory B.V., is a Dutch company that sells chocolate products around the world, in particular in Europe and in the United States. It holds several word trademarks TONY’S CHOCOLONELY, in particular the international trademark registration number 952903 TONY’S CHOCOLONELY, which was registered in December 14, 2007, in particular for chocolate and chocolate products in class 30. The Complainant also holds various domain names, in particular <tonyschocolonely.com>, <tonyschocolonely.nl>, <tonyschocolonely.de> and <tonyschocolonely.uk>. The disputed domain name was registered on June 19, 2011, and resolves to a webpage with pay-per-click (“PPC”) links relating to chocolate.
The Complainant contends that the disputed domain name, <tonychocolonely.com>, is confusingly similar to its TONY’S CHOCOLONELY trademarks and that “Tony’s Chocolonely” is a well-known brand.
Furthermore, the Complainant contends that the Respondent is in no way affiliated with the Complainant, that the latter has not given any permission to the Respondent to use its trademark, and that the Respondent has not at any time been commonly known by the disputed domain name and is not making any legitimate use of it.
Lastly, the Complainant contends that the Respondent registered and uses the disputed domain name in bad faith, in that it resolves to a website that contains links, inter alia, to online shops of some of the Complainant’s competitors.
The Respondent did not reply to the Complainant’s contentions.
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The disputed domain name registered by the Respondent 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 has been registered and is being used in bad faith.
The trademarks put forward by the Complainant demonstrate that the Complainant has rights in relevant trademarks.
Under the UDRP, the requirement under paragraph 4(a) of the Policy requires the disputed domain name to be identical or confusingly similar to the Complainant’s trademarks. There is no requirement of similarity of goods and/or services.
The disputed domain name contains the name “Tony” as well as the term “chocolonely”, which is a contraction of “chocolate” and “lonely”. The only difference between the Complainant’s trademark and the disputed domain name consists of the missing “s” in the Respondent’s disputed domain name <tonychocolonely.com>. This difference does not create any sufficient distance from the Complainant’s trademarks so as to avoid any risk of confusion. To the contrary, the public will easily recognize the Complainant’s trademark TONY’S CHOCOLONELY in the disputed domain name.
As far as the generic Top-Level Domain (“gTLD”) “.com” is concerned, this element has a technical function and therefore is typically not taken into account when assessing the issue of identity or confusing similarity.
The Panel thus finds that the disputed domain name is confusingly similar with the Complainant’s trademark TONY’S CHOCOLONELY.
The Complainant contends that the Respondent does not have any rights or legitimate interests in the disputed domain name, in particular that the Respondent has not at any time been commonly known by the disputed domain name and that the Respondent is not making legitimate use of the disputed domain name. The Complainant has also contested having granted the Respondent any rights to use its trademarks.
Furthermore, by not submitting any response to the Complaint, the Respondent failed to invoke any circumstance that might demonstrate, pursuant to paragraph 4(c) of the Policy, that it holds any rights or legitimate interests in the disputed domain name (Ahead Software AG v. Leduc Jean, WIPO Case No. D2004-0323; see also, Nintendo of America, Inc., v. Tasc, Inc. and Ken Lewis, WIPO Case No. D2000-1563.
Regarding the Respondent’s use of the disputed domain names for websites displaying links to third party websites which are in part competitive to the Complainant’s, it should be noted that such use of the disputed domain name does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the Complainant’s mark (Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267).
The Panel finds that the Complainant has made an unrebutted prima facie showing that the Respondent does not have any rights or legitimate interests in the disputed domain name. Accordingly, the burden of proof for this element shifts to the Respondent who has however not responded. Accordingly, the Panel holds that the second element of paragraph (4)(a) of the Policy is met.
It results from the case file that the Respondent uses the disputed domain name for a parking page that contains, in particular, links to websites of some of the Complainant’s competitors. It seems likely that these links generate revenues for the Respondent via PPC links. The Panel therefore considers that the Respondent, by using a disputed domain name quasi-identical to the Complainant’s trademark, creates a risk of confusion at least in the sense that the visitors of the website will expect a website operated by the Complainant or by a related person. The fact that the links contained on the website point to competing websites demonstrates the Respondent’s bad faith.
The disputed domain name was registered in 2011, so that the current use of the disputed domain name is not per se evidence for bad faith registration of the domain name. However, given the distinctive nature of the Complainant trademark TONY’S CHOCOLONELY, consisting of a combination of the name “Tony” and the imaginative contraction of “chocolate” and “lonely”, the Panel considers that – whether the Complainant’s trademark is well known or not – the Respondent must have known about the Complainant’s trademark and business when registering the disputed domain name. It is indeed highly improbable to the Panel that given the distinctive nature of the trademark “TONY’S CHOCOLONELY”, the Respondent was unaware of it at the time of the registration of the disputed domain name. This Panel thus considers that the disputed domain name for itself is a strong indication that the Respondent was aware of the Complainant’s trademark TONY’S CHOCOLONELY, as it seems more than unlikely that the Respondent would have created – randomly – a domain name that is identical in all relevant parts with the Complainant’s distinctive trademark, all the more that the terms “tony” and “chocolonely” are neither generic nor dictionary terms (Motul v. Contact Privacy Inc. Customer 0138693539 / Konstantin Speranskii, WIPO Case No. D2016-2632).
The above is in itself sufficient to infer bad faith registration and use.
For the sake of completeness, the Panel wishes to add what follows:
There is consensus in the sense that in case of a domain name transfer, the acquisition date is relevant for the assessment of bad or good faith of the acquirer.
In the present case, it is unknown whether the disputed domain name was transferred recently because a privacy service is used which makes it impossible to know about possible transfers. The fact that the disputed domain name was registered in 2011 and that, apparently, it has been used as a parking page only since recently, indicates though that the Respondent may have acquired the disputed domain name only recently. According to the Internet archive Waybackmachine “www.waybackmachine.org”, the disputed domain name seems to resolve to a parking page only since recently. Before, the website seems to have had no content or just a reproduction of the disputed domain name itself. The Panel therefore infers that there is prevailing likelihood that the domain name was acquired by the Respondent only recently and that the latter was in bad faith from the date of the acquisition.
In any case, the use of a privacy service and the constructive awareness of the Complainant’s trademark both indicate that the registrant – be it the Respondent or a third party – had bad faith intentions when registering the disputed domain name.
The Respondent has not submitted any evidence to rebut the Complainant’s claims and assertions.
The Complainant therefore has established registration and use of the disputed domain name in bad faith.
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 <tonychocolonely.com> be transferred to the Complainant.
Date: July 3, 2019
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