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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Chocoladefabriken Lindt & Sprьngli AG v. Cameron Jackson

Case No. D2007-1290

1. The Parties

The Complainant is Chocoladefabriken Lindt & Sprьngli AG, Kilchberg, Switzerland, represented by Mayer Brown LLP, Germany.

The Respondent is Cameron Jackson, New South Wales, Australia.

2. The Domain Names and Registrar

The disputed domain names <lindtchocolates.biz>, <lindtchocolates.info>, <lindttruffles.info> are registered with Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2007. On September 3, 2007, the Center transmitted by email to Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the domain names at issue. On September 4, 2007, Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com transmitted by email to the Center confirmation that the Respondent is listed as the registrant and providing the Respondent’s contact details. The Center verified that the Complainant 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 September 10, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 30, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 3, 2007.

The Center appointed Ms. Nathalie Dreyfus as the sole panelist in this matter on October 9, 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

The domain names in dispute were registered on May 6, 2007. The disputed domain names are not being used. They are not connected to any websites and do not appear to have ever been connected to any websites.

The Complainant is a well-known Swiss chocolatier which, according to the Complaint, has been in business since 1845. The Complainant manufactures and distributes on an international scale various chocolate-based products, including a type of chocolate referred to as truffles.

Its leading brand LINDT was chosen in reference to one of the founders of the company. This brand was launched in the late 19th century in Switzerland and has since then become an international brand.

The Complainant is the owner of numerous International, Community and Swiss trademarks, many of which contain the name “Lindt”. The following is a non-exhaustive list of LINDT trademarks owned by the Complainant having been registered prior to the registration of the domain names in dispute:

- International Trademark Registration No. 217838 of March 2, 1959;

- Community Trademark Registration No. 000134007 of September 7,1998;

- Australian Trademark Registration No. 704669 of March 14, 1996;

- Canadian Trademark Registration No. UCA26258 of October 17, 1946;

- German Trademark Registration No. 91037 of September 27, 1906;

- South African Trademark Registration No. 96/03392 of March 12, 1996;

- Swiss Trademark Registration No. 349150 of October 29, 1986;

- US Trademark Registration No. 87306 of July 9, 1912;

- US Trademark Registration No. 2031928 of January 21, 1997;

- US Trademark Registration No. 3127059 of July 22, 2004;

The Complainant is the owner of numerous domain names including the word “lindt” registered prior to the registration of the domain names in dispute, including the following

- <lindt.com> on December 16, 1997;

- <lindt.biz> on November 19, 2001;

- <lindt.info> on August 1, 2001;

- <lindt.net> on February 28, 2000;

- <lindt.org> on November 16, 2001;

- <lindt.at> on March 31, 2005;

- <lindt.ca> on October 16, 2000;

- <lindt.ch> on January 16, 2004;

- <lindt.cn> on March 18, 2003;

- <lindt.co.at> on March 31, 2005;

- <lindt.co.uk> on October 17, 1996;

- <lindt.com.mx> on December 1, 2004;

- <lindt.de> on July 11, 1997; and

- <lindt.us> on April 24, 2002.

The Respondent is an individual located in New South Wales, Australia.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the disputed domain names are confusingly similar to Complainant’s trademark LINDT as well as to the Complainant’s numerous domain names “lindt.TLD” since the terms “chocolate” and “truffles” are merely descriptive with regards to the Complainant field of business.

The Complainant further alleges that the Respondent has no right or legitimate interest in the disputed domain names. The Complainant claims that the Respondent is making no use or has undertaken no preparations to use the disputed domain names in connection with a bona fide offer of goods and services. The Complainant asserts that the Respondent is not commonly known by the disputed domain names and that the disputed domain names are not the object of a legitimate non-commercial or fair use.

The Complainant contends that the disputed domain names were registered and are used in bad faith due to the reputation of the trademark LINDT and the Respondent’s offer to sell the disputed domain names for a sum equivalent to the cost of a WIPO UDRP proceeding.

B. Respondent

The Respondent did not reply to the Complainant’s 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.

Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain names are 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 disputed domain names; and (iii) that the Respondent’s domain names have been registered and are 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 circumstances 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. Identical or Confusingly Similar

It is clearly beyond doubt that the Complainant has rights in a trademark LINDT for purposes of Paragraph 4(a)(i) of the Policy.

The Complainant’s trademark LINDT is incorporated in the disputed domain names in its entirety with the adjunction of the generic terms “chocolate” and “truffles”. The adjunction of the terms “chocolates” and “truffles” reinforces the association with the Complainant to the extent that the Complainant is a worldwide known company specialized in the manufacturing and distribution of premium quality chocolates. Thus, the addition of these terms is not sufficient to exclude confusing similarity with the LINDT trademark (see Chocoladefabriken Lindt & Sprьngli AG v. Jules Mass & Yuan Yuan Chou, WIPO Case No. D2007-0446, and Chocoladefabriken Lindt & Sprьngli AG v. Domain Magic LLC, WIPO Case No. D2007-0461; PepsiCo Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696; Pepsico Inc. v. Johan De Broyer, WIPO Case No. D2007-1021).

The Panel thus finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, respondents may demonstrate their rights and interests in the contested domain name by showing any of the following circumstances, in particular but without limitation:

(i) their use or demonstrable preparations to use, the contested domain names or names corresponding to contested domain names in connection with a bona fide offering of goods or services before any notice to them of the dispute, or

(ii) they (as individuals, a business, or other organizations) have been commonly known by the contested domain names, even if they acquired no trademark or service mark rights, or

(iii) they are making a legitimate non-commercial or fair use of the contested domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel notes also that the Complainant’s name and mark are widely known throughout the world.

The Respondent had the opportunity to demonstrate some rights or legitimate interest in the dispute domain names but has chosen to file no response.

The Respondent has not made any effort to use the domain names for any purpose that might explain its choice in a manner consistent with having rights or legitimate interests (see Chocoladefabriken Lindt & Sprьngli AG v. Jules Mass & Yuan Yuan Chou, WIPO Case No. D2007-0446, and Chocoladefabriken Lindt & Sprьngli AG v. Domain Magic LLC, WIPO Case No. D2007-0461). Indeed, it appears that the disputed domain names are not and have never been related to any website and while entering the terms “lindt truffles” and “lindt chocolate” in the Google search engine, the first results points to the Complainant. There is no evidence that the Respondent had a history of using or preparing to use the domain names or names corresponding to the disputed domain names in connection with a bona fide offering of goods and services.

Further, the Respondent chose not to respond to the Complainant’s allegations and in view of its failure to submit a response, the Panel will decide this dispute on the basis of the Complainant’s undisputed contentions of fact. Although the Respondent’s default does not automatically result in a decision in favour of the Complainant, the Panel may draw negative inferences from the same (“WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, paragraph. 4.6; See Unilever N.V. v. Kentech, WIPO Case No. D2005-1021).

For all these reasons the Panel finds that the second UDRP element has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states circumstances which if found shall be evidence of the registration and use of the domain name in bad faith, namely:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

It should be noted that the circumstances of bad faith are not limited to the above.

As indicated in Martha Stewart Living Omnimedia. Inc. v. Josh Gorton, WIPO Case No. D2005-1109, the overriding objective of the Policy is to prevent abusive domain name registrations and use for the benefit of legitimate trademark owners, in circumstances where the registrant is seeking to profit from and exploit the trademark of another.

The Complainant’s trademark has been well-known throughout the world for many years. Accordingly, the Panel believes that the Respondent knew of the existence of the Complainant’s existence and rights at the time of the registration of the disputed domain names (see Credit Industriel et Commercial S.A v. Maison Tropicale SA, WIPO Case No. D2007-0955; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556). This belief is reinforced by Annex C16 provided by the Complainant in which it appears that the Respondent referred to the Complainant as a well-known company during a conversation with the Complainant’s Counsel.

When the Complainant became aware of the disputed domain names it attempted to contact the Respondent to inform the same of its prior rights. The Respondent then offered to sell the domain names to the Complainant for more than his out of pocket costs, namely USD 10,000 to USD 15,000. This suggests that the Respondent has no legitimate interest beyond the pure monetary gain from the sale of the domain names. In consideration of the absence of any right or legitimate interest and the lack of any contrary evidence from the Respondent, the Respondent’s registration of domain names confusingly similar to the Complainant’s well-known trademark may be proof of bad faith (see Banca Sella s.p.a. v. Mr. Paolo Parente, WIPO Case No. D2000-1157; Veuve Clicquot Ponsardin, Maison Fondйe en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226; Ferrero S.p.A. v. Mario Pisano, WIPO Case No. D2000-1794; Ferrero S.p.A. v. Publinord S.r.l., WIPO Case No. D2002-0395; Credit Industriel et Commercial S.A v. Maison Tropicale SA, WIPO Case No. D2007-0955). The Respondent does not run active websites with the domain names in dispute and is therefore not actually using websites to divert traffic to itself. Although passive holding of a domain name may not in itself be evidence of bad faith, it has been held to be so by other previous panels where other factors exist: Pepperdine University v. BDC Partners, Inc., WIPO Case No. D2006-1003, Sybase, Inc. v. Analytical Systems, WIPO Case No. D2004-0360; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; DCI S.A. v. Link Commercial Corporation, WIPO Case No. D2000-1232; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090. In the Panel’s view, such factors exist here.

The Complainant’s mark is well-known and incorporated into the domain names in their entirety with only the adjunction of generic terms which reinforces the likelihood of association with the Complainant. The Respondent is using its registration of the domain names in dispute as leverage to attempt to negotiate a sale agreement with the Complainant.

The Respondent is using the domain names in an apparent effort to try to leverage the Complainant into a business arrangement that the Complainant has made quite clear to the Respondent it does not want. The Respondent has not overcome the plain inferences of bad faith with substantial evidence of its good faith. See Telstra, supra. Under the circumstances, the Panel concludes that the Respondent’s passive holding of the domain names constitutes evidence of bad faith use of those names. Dickinson College, supra.

Further, the Respondent has been found by previous panels under the Policy to have engaged in a pattern of registering domain names to prevent the owners of marks from registering them which reinforces the Panel’s conviction of the registration and use of the disputed domain names in bad faith (see Tom Cruise v. Network Operations Center / Alberta Hot Rods, WIPO Case No. D2006-0560; Pfizer, Inc. v. Cameron Jackson, WIPO Case No. D2005-0909 and International Organization for Standardization ISO v. Cameron Jackson WIPO Case No. D2007-0700; June Bug Enterprises, Inc v. Cameron Jackson, NAF Case No. FA566966; Diners Club International Ltd. v. Cameron Jackson, NAF Case No. FA502782.

Therefore, the Panel concludes that the Respondent has registered and used the domain names 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 names, <lindtchocolates.biz>, <lindtchocolates.info>, <lindttruffles.info> be transferred to the Complainant.


Nathalie Dreyfus
Sole Panelist

Dated: October 23, 2007

 

Источник информации: https://internet-law.ru/intlaw/udrp/2007/d2007-1290.html

 

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