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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société des Produits Nestlé SA v. Robert Keating
Case No. D2002-1035
1. The Parties
1.1 The Complainant is Société des Produits Nestlé SA, of CH-1800 Vevey, Switzerland, represented by Dr. Michael Treis, Attorney-at-Law, Baker & McKenzie, Zollickerstrasse 225, CH 8034 Zurich, Switzerland.
1.2 The Respondent is Robert Keating of 3212 N Romero Road. #1 Tuscon, AZ 85705, United States of America.
2. The Domain Name and Registrar
2.1 The disputed domain name is <wonkacandy.com> (the "Domain Name") which is registered with Tucows, Inc. (the "Registrar").
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 7, 2002 (by email). On November 8, 2002, the Center transmitted, by email, to the Registrar a request for registrar verification in connection with the Domain Name. On November 8, 2002, the Registrar 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").
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 November 11, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was December 1, 2002. No response was filed. Notification of Respondent default was served on December 3, 2002.
3.3 The Center appointed Matthew Harris as the sole Panelist in this matter on December 10, 2002. 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. A Decision is due to be provided by December 24, 2002.
4. Factual Background
4.1 The Complainant is a leading manufacturing company in the area of food, including confectionary and beverages. It is the largest company in Switzerland and the world’s largest food company with a total workforce of 224,541 and 479 factories worldwide.
4.2 "Wonka", and in particular "Willy Wonka", is the name of a character created by the famous author Roald Dahl, who became well known through Dahl’s book "Charlie and the Chocolate Factory" and the motion picture "Willy Wonka and the Chocolate Factory" produced by Wolper Pictures Ltd.
4.3 The Complainant is the owner of a broad range of trademark registrations worldwide which incorporate the words "Wonka" and "Willy Wonka’s". In particular, and as the basis of this Complaint, the Complainant relies upon the following registrations:
(a) Three US trademark registrations as follows:
(i) A device mark No 2,360,352 registered on June 20, 2000, for frozen confections in class 30 comprising the word Wonka in fancy text beneath a representation of a top hat;
(ii) A device mark No 2,298,681 registered on December 7, 1999, for candy in class 30 comprising the word Wonka in fancy text beneath a representation of a top hat;
(iii) A device mark No 1,309,263 registered on December 11, 1984, for candy in class 30, which is triangular in form and which prominently incorporates the words "Willy Wonka" in fancy text.
(b) A large number of additional registered trademarks and applications for registered trademarks world wide in respect of candy and incorporating or comprising the word "Wonka" (the "Non-US Trademarks"). Some of these marks are text marks whilst others are device marks.
4.4 The exact number of Non-US Trademarks actually relied upon by the Complainant is unclear (not least because the list provided by the Complainant identifies the same marks more than once) but it appears to exceed 150. Examples of the Non-US Trademarks include the UK text only trademarks Nos 2,237,319 and 2,119,577 for "WONKA" and "THE WILLY WONKA CANDY FACTORY" respectively. All but a handful of the Non-US Trademarks listed by the Complainant were applied for prior to September 18, 2000.
4.5 Somewhat confusingly the copy of US mark No 1,309,263 provided by the Complainant is in the name of Sunmark Inc and two of the Non-US Trademarks are also in that name. The relationship between the Complainant and Sunmark Inc is not explained in the Complaint, but the Panel notes that amongst the papers provided is a "Trademark Assignment" dated January 30, 1989, between Sunmark Inc and the Complainant, whereby the Sunmark Inc transferred a number of US trademarks and associated good will to the Complainant, including US registered trademark No 1,309,263 described above. A search on the website of the US Patent and Trademark Office also confirms that the Complainant is the current owner of US registered trademark No 1,309,263.
4.6 The Respondent registered the Domain Name <wonkacandy.com> on September 18, 2000. On September 12, 2002, the Complainant’s Swiss lawyers sent a letter to the Respondent demanding, inter alia, the transfer of the Domain Name to the Complainant. The Respondent did not reply to this letter.
4.7 The Respondent does not appear to use the Domain Name.
5. Parties’ Contentions
Complainant’s use of the marks
5.1 According to the Complainant the "WONKA" and "WILLY WONKA’S" trademarks enjoy a "very high reputation and goodwill". They have been used continuously in the USA since 1971. The Complainant currently sells a wide array of candies under the "WONKA" and "WILLY WONKA’S" marks (e.g. Nerds, Shock Tarts, Laffy Taffy, Oompas, Runts, Gobstopper, Lik-m-aid, Fun Dip, Pixy Stix, Bottle Caps, Tart’n tinys). The Complainant claims that "substantial" revenues are drawn from sales of products under the US marks but the amount of these revenues is not disclosed.
5.2 The Complainant further relies upon the fact that it has invested significantly in advertising and promoting "the trademarks WONKA or WILLY WONKA’S". It has provided evidence in this respect in the form of a CD Rom containing a television advertisement for one of the Complainant’s "WONKA" candy products.
5.3 The Complainant also operates an extensively animated and interactive website under the domain name <wonka.com>. On this website "WONKA" and "WILLY WONKA’S" are both used in connection with the Complainant’s candy products.
5.4 The Complainant further contends that independent candy stores, customers and third parties consistently use the term "Wonka Candy" in day to day business when referring to several of the Complainant’s products or to all its products as a whole. Copies of Internet searches against the term "Wonka Candy", which show that the majority of hits relate to stores offering "Wonka" products, are offered in evidence in this respect.
Identical or confusingly similar
5.5 The Complainant asserts that the distinctive element of the Domain Name <wonkacandy.com> "is identical with the trademark WONKA". The element "candy" refers to the products sold under the trademark and is merely descriptive. Thus the domain name creates the impression that it relates to a website for "WONKA" candies operated by, or affiliated with, the Complainant.
5.6 The Complainant contends that this case is therefore similar to those faced by WIPO Panels in <calvinkleinperfumes.com> (WIPO Case No. D2001-1039), <toefltests.com> (WIPO Case No. D2001-1063), <athlonchip.com> (WIPO Case No.D2000-0530) and <bmwdealer.com> (WIPO Case No. D2002-0787). On the basis of the same reasoning adopted by the WIPO Panels in these cases, the Complainant submits that the Respondent’s Domain Name is clearly confusingly similar with the Complainant’s trademarks.
No rights or legitimate interests
5.7 The Complainant contends that the registered address of the Respondent shows that he is domiciled in the USA where the Complainant’s trademarks, "WONKA" and "WILLY WONKA’s", are well known and highly distinctive. The fact that the Respondent used the term "candy" as opposed to any other descriptive term in the Domain Name is said to evidence that he was aware of the Complainant’s products and trademark rights. The Respondent is not authorized by and has no other link with the Complainant. There is no evidence of the Respondent’s use of the domain name in connection with bona fide offering of goods and services. The website has never been active and the Respondent cannot rely on any right of his own or any legitimate interest to use the word "WONKA".
Registration and Use in Bad Faith
5.8 According to the Complainant the trademarks "WONKA" and "WILLY WONKA’s" are well known in the USA and the term "Wonka Candy" is regularly used in day to day business by candy stores and customers. It is claimed, therefore, that the Respondent must have been aware of the trademarks and the kinds of products sold thereunder since he registered a domain name which consists of (a) the trademark and (b) the generic term describing the products sold under the trademarks.
5.9 The fact that the Respondent must have been aware of the Complainant’s rights and has chosen the Domain Name <wonkacandy.com> is stated to be evidence that registration took place in order to prevent the Complainant from reflecting the trademark in a corresponding domain name, and to sell the Domain Name to the Complainant or a competitor.
5.10 As to bad faith use, the Complainant relies upon the decision in WIPO Case No. D2000-0003 <telstra.org> in which it was held that the Respondent’s non-use of a website under the domain may be an indication of bad faith use of that domain name. In this respect the Complainant relies upon (a) the knowledge of the Respondent at the time of Registration, which the Complainant contends means that his non-use can only be interpreted as "an implicit offer to sell to the Complainant"; (b) the fact that the Respondent did not reply to the Complainant’s cease and desist letter; and (c) the contention that it is "impossible to conceive of a legitimate active use of the domain name" since if the "Respondent used [the] domain name, it would immediately create the confusion described in the Policy".
5.11 The Respondent has not responded to the Complaint and has thus made no submissions to the Panel.
6. Discussion and Findings
6.1 The Panel has reviewed the Complaint and the documents annexed to the Complaint. In the light of this material, the Panel finds as set out below.
6.2 This Panel does not find there are any exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel determining the Complaint, notwithstanding the failure of the Respondent to lodge a Response. Details of these proceedings have been served in accordance with the relevant requirements set out in the Rules.
6.3 Notwithstanding the default of the Respondent it remains incumbent on the Complainant to "prove" each of the Rules of the elements set out in paragraph 4(a) of the Policy. However, under paragraph 5(e) if the Respondent does not submit a response and in the absence of exceptional circumstances, "the Panel shall decide the dispute based upon the Complaint". Further, under paragraph 14 of the Rules where a party does not comply with any provision of the Rules, the Panel "shall draw such inferences therefrom as it considers appropriate".
Identical or Confusingly Similar
6.4 Although the Complainant relies upon a very large number of trademarks it does not rely upon any mark identical to the Domain Name. Therefore the question for the Panel is whether the domain name is confusingly similar to any of the marks relied upon. In undertaking this analysis, the Panel agrees with the Complainant’s contention that the most distinctive element of the Domain Name is the word Wonka. The element "candy" refers to the products sold under the trademark and as such is descriptive.
6.5 The Panel also agrees that the WIPO decision in <calvinkleinperfumes.com> (Case No. D2001-1039) and similar cases cited by the Complainant is relevant to the instant case. In the <calvinkleinperfumes.com> case the Complainant relied upon five US trademarks that included the name "Calvin Klein" or "CK" for, among other goods, perfume. The Panel in that case held that the inclusion of the term "perfumes" with the name "Calvin Klein" in the domain name "[did] not diminish the confusing similarity of the domain names to the Calvin Klein trademarks because the term "perfumes" describe[d] the products offered by [the] Complainants under the Calvin Klein trademarks.
6.6 The Panel adopts the same reasoning in the case now before it. Accordingly, the Panel is of the view that the Domain Name, <wonkacandy.com>, is confusingly similar to (a) the Complainant’s US trademark No 2,298,681; and (b) all the Complainant’s Non-US Trademarks that were registered as at September 18, 2000, and which comprise simply of the word "Wonka" (of which there are at least nine). As has been described above, the Complainant relies upon many more trademarks than these. However, given the Panel’s finding in respect of US trademark No 2,298,681 and nine of the Non-US Trademarks, it is not necessary for the Panel to form a view as to whether the Domain Name is confusingly similar to any other mark.
Rights or Legitimate Interests
6.7 There is no evidence to show that the Respondent had any legitimate basis to register the Domain Name or any intent to use it in any manner unconnected with the Complainant’s business. Absent such evidence, the Panel is entitled to infer, and concludes, that the Respondent does not have any rights to or legitimate interest in the Domain Name.
Registered and Used in Bad Faith
6.8 In the absence of any evidence of submissions to the contrary, the Panel accepts the Complainant’s contention that the value of the goodwill in the US attached to the Complainant’s trademarks is substantial. Further the Panel accepts that this goodwill and the fact that the Respondent has decided to combine the Complainant’s registered trademark (or at least a highly distinctive element of a number of the Complainant’s trademarks) and the generic class of goods to which trademark relate suggests that the Respondent must have been aware of the Complainant’s reputation and rights in the trademarks at the time of registration.
6.9 As to bad faith use, the Domain Name is inactive. There is no holding page and no evidence of any intention to use the Domain Name for a website since its registration in September 2000. The Panel agrees with the Complainant’s contention that the line of WIPO Cases starting with Case No D2000-0003 involving <telstra.org> show that non-use can in some circumstances amount to bad faith on the part of the registrant.
6.10 In this case the following circumstances are all factors pointing to bad faith use:
(a) The strength of the Complainant’s reputation in the US in the "Wonka" name in respect of candy;
(b) The failure on the part of the Respondent to respond to the cease and desert letter; and
(c) The failure on the part of the Respondent to file a Response.
6.11 Given the fact that the reasons for registering and holding a domain name are peculiarly within the knowledge of the Respondent, it is not unreasonable for the Panel to draw the inference from the failure on the part of the Respondent to explain its reasons for registering and holding the domain name that there was no good faith reason for doing so.
6.12 The Panel has some difficulty in accepting the Complainant’s apparent contention that it is impossible to conceive of any legitimate active use of the domain name by the Respondent. This is particularly so given the unusual factor in this case that both "Wonka" and "Willy Wonka" have a well known literary origin and thereby an association with chocolate and candy that predates any association with the Complainant. Furthermore, the Panel does not believe that the Complainant’s contention in this context that any use of the Domain Name would necessarily result in confusion particularly assists. In many cases, confusion may well constitute evidence of bad faith use. For example, paragraph 4(b)(iii) of the Policy provides that "intentionally attempt[ing] to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the Complainant’s mark …" constitutes evidence of the registration and use of a domain name in bad faith. However, confusion and bad faith are not the same thing.
6.13 Nevertheless, it is not necessary for a complainant to show that it is impossible to conceive of any good faith use of a domain name to succeed in a claim that in the specific circumstances of a particular case there has been bad faith use. Indeed, it is noteworthy that this was not quite what the Panel concluded was the case in the <telstra.org> decision. Instead, the Panel commented that taking into account the other factors that pointed to bad faith use in that case, it was "not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate". The use of the word "plausible" here was and is important.
6.14 Is there then in the circumstances of the instant case a plausible legitimate actual or contemplated active use of the <wonkacandy.com> Domain Name by the Respondent? The Panel concludes that, notwithstanding the peculiar literary origin of the "Wonka" and "Willy Wonka" names in this case, there is not.
6.15 Taking all these factors into account the Panel finds that bad faith registration and use are both made out by the Complainant.
7.1 For these reasons, the Panel concludes that the Complainant has sufficiently proved
- The Domain Name is confusingly similar to a large number of the Complainant’s registered trademarks.
- The Respondent does not have any rights to or legitimate interest in the
- The Domain Name was registered and used in bad faith
7.2 Therefore, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <wonkacandy.com> be transferred to the Complainant.
Dated: December 23, 2002