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Arbitration and Mediation Center
Hershey Foods Corporation and Hershey Chocolate & Confectionery Corporation v. Amcore & Company For sale domains $250 or best offer
Case No. D2003-0838
1. The Parties
The Complainants are Hershey Foods Corporation, and Hershey Chocolate & Confectionery Corporation, both Delaware corporations with their principal places of business in the United States of America. The Complainants are represented by James T. Walsh and Catherine R. Rowland of Arnold & Porter, Washington D.C., United States of America.
The Respondent is Amcore & Company For sale domains $250 or best offer. The Respondent’s address is: Tehran, Iran Postal District, US.
2. The Domain Name and Registrar
The disputed domain name <hesheys.com> is registered with BulkRegister LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 22, 2003. On October 24, 2003, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain name at issue. On October 24, 2003, BulkRegister.com 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 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").
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 October 28, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was November 17, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default by email and by facsimile on November 18, 2003, and by email on November 20, 2003.
The Center appointed Dr. David J. A. Cairns as the Sole Panelist in this matter on November 20, 2003. 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 Complainants are a parent corporation and a wholly-owned subsidiary engaged in the manufacture of chocolate and other confectionery items in the United States and throughout the world. They market chocolate and other confectionery items under the HERSHEY and HERSHEY’S trademarks.
The Complainants are the owners of United States Federal trademark registrations for the HERSHEY’S (U.S. Reg. No. 54,041) and HERSHEY (U.S. Reg. No. 1,455,684) trademarks (hereafter referred to as the "HERSHEY marks"). The HERSHEY’S trademark registration records that it was first registered in 1906, and the trademark was first used in commerce in 1894. The first use date for the HERSHEY trademark is recorded as 1907.
The Complainants also own United States Federal trademark registration for HERSHEYS.COM (U.S. Reg. No. 2,649,859). The HERSHEYS.COM registration was filed in 1999, and registered and first used in 2002. It is in respect of various classes of goods and/or services including "computerized on-line retail and ordering services in the field of candy, confectionery, baking, sweet snack food, and giftware products," and "entertainment and education services in the nature of interactive games and activities all available via websites on global computer networks."
The Complainants operate a website with the <hersheys.com> domain name. This website includes information about the Complainants’ products, and includes a link to pages geared towards children including, amongst other things, games for children.
The disputed domain name was registered on December 13, 2000. It was for some time registered in the name of "(This Domain is For Sale) Joshuathan Investments, Inc.," before being transferred into the name of the Respondent during October 2003. The disputed domain name is in use as a portal with links to other sites on the web, grouped under the headings "Shopping," "Computers," "Business," "Finance," "Home," "Gambling," "Travel" and "People." It is not an individualized portal, but operates through a generic portal (called "top10sites").
The Respondent’s site contains the statement "This Domain is For Sale" with a link to an email address of email@example.com.
5. Parties’ Contentions
The Complainants state that they are a major chocolate and confectionery manufacturer in the United States and throughout the world. They state that the HERSHEY marks are "highly distinctive and famous source identifiers" of their products and services, and "are universally recognized symbols of Hershey’s goodwill."
The Complainants state that in fact they own over 90 U.S. federal trademark registrations, and have over 575 active trademarks registered worldwide incorporating the word "hershey." They also own 360 domain names incorporating "hershey."
The Complainants contend that the Respondent is a serial cybersquatter. They allege that the Respondent is simply an alias for Joshuathan Investments, Inc., which has registered over 100 domain names, including domain names comprising the misspellings of famous marks, and has been the respondent in numerous administrative proceedings. The Complainants, in order to demonstrate that the Respondent and Joshuathan Investments, Inc. are the same or at least are affiliated, refer to various circumstances including the following: the Respondent was listed in the registration information for the disputed domain name when Joshuathan Investments, Inc. was previously listed as registrant; numerous other registrations in the name of Joshuathan Investments, Inc. were also transferred to the Respondent in October 2003; and the website associated with the disputed domain name has not changed since the change in registration.
The Complainants contend that the Respondent’s registration violates the Policy, and request that the disputed domain name be transferred to Hershey Chocolate & Confectionery Corporation. They state that the "second level portion of the Respondent’s domain name, namely "hesheys," is similar in appearance, sound and commercial impression to the "Hershey" portion of the HERSHEY marks, and is therefore confusingly similar to such marks." It is said to be an obvious example of "typosquatting," where a registrant tries to capitalize on typographical errors made by websurfers. The Complainants referred to numerous administrative decisions relating to typosquatting, and to United States legislation. The Complainants also allege that the Respondent had no rights or legitimate interests in the disputed domain name, and registered the disputed domain name in bad faith, and refer to the lack of bona fide use, evidence that the domain name was for sale by the Respondent, the fact that the Respondent must have had knowledge of the Complainants’ trademarks and use of the HERSHEY marks, the failure to respond to the Complainants’ attempts to make contact concerning the disputed domain name, similar fact evidence in relation to famous third party trademarks, and the use of the disputed domain name in connection with gambling and pornographic websites.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
The Panel is required 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 appropriate.
The Policy requires the Complainants to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the Respondent’s domain name has been registered and is being used in bad faith. Paragraph 4(.b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(.c) sets out various circumstance which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name.
A. Whether the Disputed Domain Name is Identical or Confusingly Similar to the Complainants’ Trademarks:
The Administrative Panel accepts that the Complainants have rights in the HERSHEY’S, HERSHEY, and HERSHEYS.COM trademarks.
The Administrative Panel considers that the disputed domain name is confusing similar to the trademarks in which the Complainants have rights for the following reasons: (a) the second level portion of the disputed domain name differs only from the HERSHEY trademark in the omission of a single letter. The visual effect of this difference is minimal. An omission of this nature is less obvious where it occurs in the middle of the word and not, for example, at the beginning; (b) the disputed domain name is phonetically almost identical to the Complainants’ trademarks, consisting of the suppression of a consonant which is virtually silent; (c) there is probably no other word or combination of letters less distinguishable from the Complainant’s’ trademarks than the disputed domain name that the Respondent has chosen.
There has been some discussion by other Administrative Panels as to whether
confusing similarity should be determined on the basis of a literal comparison
of the disputed domain name and the trademark, or whether the characteristics
of customers should also be considered (see Bayerische Motoren Werke AG v.
(This Domain is for Sale) Joshuathan Investments, Inc., WIPO
Case No. D2002-0787 (October 8, 2002)). In the present case, consideration
of the nature of the Complainants’ customers only strengthens the conclusion
that the disputed domain name is confusingly similar to the Complainants’ trademarks.
There is no reason to expect that the Complainants’ customers will be particularly
discerning of a small difference in the spelling between the trademarks and
the disputed domain name; in fact quite the reverse in respect of a products
as popular as chocolate and confectionery, and where there is evidence that
the Complainants consider children an important segment of their market. Further,
there is an overlap between the classes of services covered by the HERSHEYS.COM
registration, and therefore the customers likely to be seeking these services,
and the links in the Respondent’s website under the disputed domain name.
B. Whether the Respondent has no Rights or Legitimate Interests in respect of the Domain Name:
It appears that the Respondent’s only use of the disputed domain name is as a portal to other websites and probably as a source of advertising revenue.
The Administrative Panel finds that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services, within the meaning of Article paragraph 4(.c)(i) of the Policy, because: (a) The "Heshey" name is not indicative of any goods or services offered for sale on the Respondent’s portal; (b) the disputed domain name is used in connection with a generic portal, and does not in itself amount to a bona fide offering of services under the "Heshey" name; (c) the disputed domain name is almost identical to and highly confusing with the Complainants’ well-known trademarks; and further (d) the Administrative Panel concludes on the basis of the evidence submitted by the Complainants and from the Respondent’s failure to file an answer in this proceeding, that the Respondent adopted the disputed domain name with the intent to make commercial gain from typographical errors made by internet users, and that such calculated "‘typosquatting’" is not a bona fide offering of goods or services.
The Administrative Panel also concludes that "Heshey" is not the Respondent’s name, nor the name that its business or organization is commonly known by, and that there is not any legitimate noncommercial or fair use of the disputed domain name, within the meaning of paragraphs 4(.b)(ii) and (iii) of the Policy.
The Administrative Panel is therefore satisfied that the Complainants have proved that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Whether the Respondent has Registered and Used the Disputed Domain Name in Bad Faith:
Article Paragraph 4(.b) of the Policy sets out four non-exclusive factors which, if found by the Administrative Panel, shall be evidence of the registration and use of a domain name in bad faith. The fourth of these circumstances, set out in Article paragraph 4(.b)(iv), is that the domain name is used by the respondent with the intention of attempting to attract, for commercial gain, internet users to the respondent’s website, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of, inter alia, the respondent’s website.
Article Paragraph 4(.b)(iv) is clearly satisfied in this case. As already explained, the Administrative Panel accepts that the disputed domain name was registered in an attempt to attract, for commercial gain, internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainants’ well known trademarks, through adopting a domain name calculated to take advantage of typographical errors by internet users.
Further, the Administrative Panel accepts that the Respondent is connected with a serial cybersquatter, and has and continues to offer the disputed domain name for sale, which in all of the circumstances of this case are corroborative evidence of bad faith.
The Administrative Panel therefore accepts that the disputed domain name has
been registered and is being used in bad faith.
For all the foregoing reasons, in accordance with pParagraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <hesheys.com>, be transferred to the Complainant Hershey Chocolate & Confectionery Corporation.
David J. A. Cairns
Dated: December 4, 2003.