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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Fannie May Confections, Inc. v. Domain Contact 2 (FANNIEMAYS-COM-DOM)

Case No. D2006-0813

 

1. The Parties

The Complainant is Fannie May Confections, Inc., New York, of United States of America, represented by Kilpatrick Stockton, LLP, United States of America.

The Respondent is Domain Contact 2 (FANNIEMAYS-COM-DOM), California, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <fanniemays.com> is registered with DSTR Acquisition VII, LLC d/b/a Dotregistrar.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 27, 2006. On June 28, 2006, the Center transmitted by email to DSTR Acquisition VII, LLC d/b/a Dotregistrar.com a request for registrar verification in connection with the domain name at issue. On July 5, 2006, DSTR Acquisition VII, LLC d/b/a Dotregistrar.com transmitted by email to the Center its verification response advising the identity of the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on July 8, 2006. 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”), 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 July 13, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was August 2, 2006. The Respondent did not submit any response. The Center subsequently notified the Respondent’s default.

The Center appointed Ms. Lynda Zadra-Symes as the sole panelist in this matter on September 12, 2006. 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

Complainant is the owner of the trademarks and service marks FANNIE MAY (U.S. Registration No. 2,121,790 issued December 16, 1997), I LOVE MY HONEY BUT OH YOU FANNIE MAY! (U.S. Registration No. 1,468,535, issued December 8, 1987), FANNIE MAY KITCHEN FRESH CANDIES (U.S. Registration No. 1,407,863, issued September 2, 1986) and FANNIE MAY CANDIES CELEBRATED COLLECTION (U.S. Registration No. 2,173,898, issued July 14, 1998).

 

5. Parties’ Contentions

A. Complainant

The following facts are derived from the Complaint and its annexed documents. The Respondent did not respond to the Complaint and has not contested any of these facts.

Complainant has used the mark FANNIE MAY for more than eighty-five years. Complainant’s founder opened his first Fannie May shop selling Fannie May candies in 1920. Since that time, Complainant has used the mark in connection with a wide variety of candy confections sold through Fannie May retail stores, catalogues and through hundreds of other retail outlets throughout the United States. In addition, since 2001, they have been sold online at <fanniemay.com>.

Complainant and its predecessors have spent hundreds of thousands of dollars promoting the FANNIE MAY brand and have sold millions of dollars worth of Fannie May products. As a result of this extensive marketing, the FANNIE MAY brand has become distinctive and extremely well-known for high quality sweets and other food products.

Complainant contends that the domain name at issue is confusingly similar to Complainant’s mark because it consists of Complainant’s exact mark with the addition of an “s” at the end. Complainant further contends that Respondent has no rights or legitimate interests with respect to the domain name, and has registered and used the domain name in bad faith.

B. Respondent

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

 

6. Discussion and Findings

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain name incorporates Complainant’s federally registered FANNIE MAY mark in its entirety. In considering the similarity between the domain name and the trademark, it is well accepted that the gTLD may be disregarded. It is also well accepted that the addition of an “s” to the mark does not avoid a finding of confusing similarity.

The Panel finds that the disputed domain name is identical and confusingly similar to Complainant’s registered FANNIE MAY mark.

B. Rights or Legitimate Interests

Complainant’s first use and registration of its FANNIE MAY mark predate any use that Respondent may have made of <fanniemays.com> as a trade name, domain name, or as a common name. Respondents’ domain name was registered more than eighty years after Complainant first used its mark and several years after Complainant began offering its products online at <fanniemay.com>. Moreover, Complainant’s federal trademark registrations, which predate Respondent’s registration of the disputed domain name by several years, constitute constructive knowledge of Complainant’s rights in the FANNIE MAY trademark. In view of the extensive promotion of Complainant’s products under the FANNIE MAY brand, it is highly likely that Respondent in fact knew of Complainant’s prior rights in the FANNIE MAY trademark.

The Panel finds that the Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interests in the disputed domain name.

In the absence of a rebuttal from the Respondent, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Complainant contends that the domain name was registered and is being used in bad faith based on the following facts:

(i) Respondent registered or acquired the domain name primarily for the purpose of selling it for an amount in excess of Respondent’s documented out of pocket costs directly related to the domain name. Complainant submitted with the Complaint the archived homepage that an Internet user would reach when he keyed in the <fanniemays.com> domain name. This page prominently displays the words “For Sale. This domain is For Sale. www.fanniemays.com is for sale.” This page was first displayed in 2002, the same year that Respondent registered the domain name.

(ii) The domain name has not been used, and was not used prior to Respondent’s being informed of Complainant’s rights, for any legitimate offering of goods or services.

(iii) On March 7, 2006 and April 6, 2006, Complainant sent letters to Respondent’s representative by U.S. Mail and e-mail (sent to Respondent’s addresses shown in the WHOIS database) regarding Respondent’s infringement of Complainant’s rights. Complainant received no response to the letters. Indeed, the address given in the WHOIS information is incomplete as there is no street address provided.

(iv) Complainant contends that Respondent registered and intends to use the <fanniemays.com> domain name to profit from the goodwill that Complainant has built in its FANNIE MAY mark, either by: a) holding the domain name for a ransom to be paid by Complainant, b) selling the domain name to a competitor of Complainant, or c) setting up a commercial site to which persons seeking to reach Complainant’s site would be diverted if they mistakenly added an “s” to Complainant’s mark.

In all likelihood, it would appear that Respondent had actual knowledge of Complainant’s trademark rights before registering the domain name in 2002, eighty years after Complainant first began using its FANNIE MAY mark, and several years after Complainant began offering its products online at <fanniemay.com>. In addition, Respondent’s offering for sale of the domain name is an indication that Respondent has registered the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration for an amount in excess of Respondent’s documented out of pocket costs.

The Panel concludes that Complainant has met its burden of establishing Respondent’s bad faith registration and use of the domain name.

 

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, <fanniemays.com> be transferred to the Complainant.

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Lynda J. Zadra-Symes
Sole Panelist

Dated: September 26, 2006