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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Fannie May Confections Inc. v. Domain Contact 3

Case No. D2006-1654

 

1. The Parties

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

The Respondent is Domain Contact 3, Beverly Hills, California, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <faniemay.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 December 28, 2006. On December 29, 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 December 30, 2006, DSTR Acquisition VII, LLC d/b/a Dotregistrar.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, 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”).

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 January 5, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 25, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 29, 2007.

The Center appointed Nicolas Ulmer as the sole panelist in this matter on February 19, 2007. 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 a company in the retail industry in the United States, notably in the sale of candy and confections. Complainant is the owner of the following United States Marks:

FANNIE MAY,

Federal Registration No. 2,121,790

Issued December 16, 1997

I LOVE MY HONEY BUT OH YOU FANNIE MAY!,

Federal Registration No. 1,468,535

Issued December 8, 1987

FANNIE MAY KITCHEN FRESH CANDIES,

Federal Registration No.1,407,863

Issued September 2, 1986

FANNIE MAY CANDIES CELEBRATED COLLECTION,

Federal Registration No. 2,173,898

Issued July 14, 1998

Complainant has been in business since 1920, and has extensively promoted and advertised its products in all manner of media, making use of its Marks. Complainant offers its products online at “www.fanniemay.com”. The disputed domain name, <faniemay.com>, was registered on or about October 26, 2002. The disputed domain name leads to a portal page and “Find: it” search engine, providing links to a wide variety of goods and services; Complainant submits evidence demonstrating that these include, or have included, various candies and sweets.

 

5. Parties’ Contentions

A. Complainant

Complainant alleges that due to its extensive promotion of its Marks and product over many years, it has both common law use and federally registered rights in the United States of America that predate Respondent’s domain name registration. The disputed domain name, Complainant points out, was registered after Complainant began offering its products online at “www.fanniemay.com”. Specifically, Complainant alleges, with evidence, that Respondent’s website provides links to competing companies providing similar services in direct competition with Complainant. Complainant maintains that Respondent was aware of Complainant’s rights prior to its deliberate adoption of the disputed <faniemay.com> domain name, which differs from Complainant’s marks, trade and domain name only in the dropping of one “n” (“fanie” as opposed to “fannie”). Complainant also points out that Respondent appears to have a pattern of registering domain names with slight variations on its Marks. This is because “Domain Contact 2”, apparently an emanation of Respondent, was recently found to have in bad faith registered and used <faniemays.com>, which domain name was transferred to Complainant (See Fannie May Confections Inc. v. Domain Contact 2, WIPO Case No. D2006-0813).

B. Respondent

The Respondent filed no answer and therefore did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

The Policy, in its paragraph 4(a), provides that the Complainant must prove each of the following:

(i) The Respondent’s Domain Name is identical or confusingly similar to a trade or service mark in which Complainant has rights; and

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

(iii) The Domain Name has been registered and used in bad faith.

Claimant has submitted a clear and well-documented Complaint, which readily meets its burden of proving the three elements of paragraph 4(a) of the Policy.

A. Identical or Confusingly Similar

The disputed domain name, while not identical to Complainant’s marks, is sufficiently similar to meet the threshold burden of proof. This is all the more the case where, as here, there is evidence and indicia of “typo squatting”, i.e. a deliberate misspelling of a well-known name designed to attract users who mistype or misspell that name. It is well established that small and insignificant differences between a disputed domain name and a complainant’s marks will not be sufficient to overcome a finding of confusing similarity (See e.g., Network Solutions LLC v. Click Search, WIPO Case No. D2005-0453; Estйe Lauder Inc. v. Estelauder.com et al, WIPO Case No. D2000-0869). Here the dropping of one “n” does not change the pronunciation or nature of the name included in the disputed domain name, and is clearly confusingly similar to Complainant’s Marks and trade name.

B. Rights or Legitimate Interests

There is here no evidence of any right or legitimate interest of Respondent in Complainant’s Marks in accordance with paragraph 4(c) of the Policy, and none can be inferred. On the contrary, inferences, facts and allegations all point to a wrongful use. Complainant’s U.S. Federal trademark registrations predate Respondent’s registration of the disputed domain name by several years, and are sufficient to 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 likely that Respondent knew of Complainant’s prior rights in the FANNIE MAY trademark. Based on the case file and in the absence of a Response from the Respondent, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name (Accord Fannie May Confections Inc. v. Domain Contact 2, WIPO Case No. D2006-0813).

C. Registered and Used in Bad Faith

There is significant proof and indicia that Respondent’s registration and use for profit of the disputed domain name was done in bad faith. In particular, the disputed domain name has been used to direct or divert web users, presumably potential customers, for profit, to sites that sell products that compete with Complainant’s products. This genre of activity is specific evidence of bad faith under paragraph 4(b)(iv) of the Policy. Respondent’s “typo squatting”, noted above, is further indicia of bad faith in registration, as it appears that the disputed domain name was registered with knowledge of Complainant’s prior rights and as a confusing variation on the FANNIE MAY name. The apparent pattern of behaviour in registering websites with variations of the FANNIE MAY name is further such indicia. The Panel finds that Respondent’s registration and use of the disputed domain name is in bad faith.

 

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 <faniemay.com> be transferred to the Complainant.

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Nicolas Ulmer
Sole Panelist

Dated: March 5, 2007