The Complainant is Columbia Insurance Company of Omaha, Nebraska, United States of America, represented by Madderns Patent & Trade Mark Attorneys, Australia.
The Respondent is The Chefs Toolbox Pty Limited of Alexandria, Australia.
The disputed domain name <thepamperedchef.com.au> is registered with Web Address Registration Pty Ltd (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 18, 2014. On February 18, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 25, 2014, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on March 6, 2014.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 March 28, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 17, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 28, 2014.
The Center appointed James A. Barker as the sole panelist in this matter on May 5, 2014. 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.
On May 20, 2014, the Panel extended the due date for the decision until May 26, in accordance with paragraph 10 and 15(b) of the Rules. On the same date, the Center received an email from the Respondent.
The Complainant, through its predecessor and now licensee, The Pampered Chef Ltd, sells kitchen tools, household products, food products, cookbooks and related goods and services under the brand The Pampered Chef. The Complainant has conducted this business using a party plan business model since as early as 1980. The Complainant’s founder began promoting the Complainant’s products through in-home cooking demonstrations which came to be known as “cooking shows”.
The Complainant’s branded products are still primarily promoted through these in-home cooking shows and, in the United States alone, there are more than 1 million cooking shows held each year.
The Complainant’s branded product range at any time is now in excess of 300 items, which are promoted and sold by a worldwide direct sales force in excess of 60,000.
The Complainant owns a portfolio of trademarks which comprise or contain THE PAMPERED CHEF and an associated portfolio of domain name registrations which incorporate that mark. These include marks registered in Australia, where the Respondent has its address, as well as marks registered in the United States.
The Complainant and its licensee are committed to expanding its business and, to this end, held two test sales shows in Australia in March 2012. The Complainant also provides evidence that the Complainant’s branded products find their way into the Australian market via “www.ebay.com.au”.
In July 2012, the Complainant’s legal representative wrote a letter to the Respondent asserting that the Respondent’s registration of the disputed domain name improperly suggests a connection between the Complainant’s licensee (The Pampered Chef, Ltd) and the disputed domain name and any associated website. The letter asserted that the Respondent had no good faith basis for registering or using the disputed domain name and contended that the registration misleads the public and dilutes the quality of the Complainant’s brand. The letter requested that the Respondent give an undertaking to transfer the disputed domain name to the Complainant. After sending follow up emails, the Respondent replied in August 2012 that (among other things) “our interpretation of ICAAN’s [sic] Uniform Domain Name Dispute Resolution Policy (para 4.a.iii) is that the domain must be registered and in use to be in breach of a trademark. As we are not using the domain, we are not misleading the public and hence are not in breach of the Complainant’s trademark and see no requirement to transfer ownership [emphasis in the original].”
In the absence of a Response there is no direct evidence as to the business of the Respondent. The name of the Respondent suggests that the Respondent’s business is concerned with kitchen products. The Complainant provided evidence of the Respondent’s website at “www.thechefstoolbox.com”, in which the Respondent refers to itself as “The Chefs Toolbox” and offers goods and services, including kitchen products, for sale under that name.
As confirmed by the Registrar in this case, the disputed domain name was first created in June 2012. The Panel has inferred that this is the date that the disputed domain name was first registered by the Respondent.
Although not indicated in the Complaint, the Complainant has previously been a successful Complainant in cases under the Uniform Domain Name Dispute Resolution Policy (“UDRP”), in which its trademark rights have been recognized. These include, for example, Columbia Insurance Company v. G Design, WIPO Case No. D2006-1617, and Columbia Insurance Company v. Fred Sacco, WIPO Case No. D2006-1618.
The Complainant claims that the disputed domain name is identical or confusingly similar to the Complainant’s THE PAMPERED CHEF trademark, as it incorporates that trademark in its entirety. The “.com.au” suffix is inconsequential and should be disregarded.
The Complainant also says that the Respondent has no rights or legitimate interests in the disputed domain name. The disputed domain name resolves to a “holding page”. The Complainant says that, to the best of its knowledge, the Respondent has never made a bona fide use of the disputed domain name. The Complainant says that the Respondent’s reply to its “cease and desist” letter was an admission that the Respondent was not making any use of the disputed domain name, nor appeared to have any intention of making a use of it. Neither did the Respondent assert any rights or legitimate interests in the disputed domain name.
The Complainant claims that the disputed domain name was registered or was subsequently used in bad faith. The Respondent’s business is very similar to that of the Complainant. The Respondent’s website states that the Respondent is a “party plan compan[y]” which offers cookware and related goods and services centered around in-home “cooking parties” managed by consultants.
The Complainant provides evidence of on-line articles from 2008 in which the apparent founder of the Respondent was quoted as saying that “I was looking for a business and saw that The Pampered Chef had been bought by Warrant Buffett and I thought ‘if its good enough for him, it could work for us’ and away we went.”
Given the Respondent’s knowledge of both the Complainant and the success of the Complainant’s business, the Complainant contends that the Respondent would have been aware that the Complainant was likely to want to reflect its brand in a corresponding Australian domain name. The Complainant claims that the Respondent’s registration was designed to prevent the Complainant from reflecting its mark in a corresponding domain name and was primarily for the purpose of disrupting the business of the Complainant. The Complainant further alleges that it is reasonable to conclude that the Respondent’s intention was to use the disputed domain name, at some stage in the future, to attempt to misleadingly attract Internet users for commercial gain.
The Respondent did not reply to the Complainant’s contentions.
However on May 20, 2014, in reply to a notification that the due date for the decision had been extended, the Respondent sent an email to the Center. In that email, the Respondent stated that “This domain has come up for renewal on 3 June 2014. As with all our domains, we assess them against our forward needs. Within that assessment, we have decided to not renew this domain upon its expiry. This is not an admission of any wrong doing but simply part of our renewal assessment.”
For the Complaint to succeed, under paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered in bad faith or subsequently used in bad faith.
The onus is on the Complainant to establish each of the above circumstances. These circumstances are discussed below, immediately following a procedural issue which arises from the Respondent’s statement that it will not renew the registration of the disputed domain name. The Panel notes that the Policy is, with some notable exceptions, substantially similar to the UDRP and, as such, the Panel has drawn on authority concerning the UDRP, in relation to similar terms of the Policy.
As noted above, the Respondent has sent a communication to the Center, stating that it will not renew the registration of the disputed domain name. This raises the question of whether the Panel needs to proceed to a decision, as the Respondent is signaling that it will not seek to hold on the registration of the disputed domain name.
Despite this statement by the Respondent, the Panel has proceeded to consider the merits of this case for the following reasons:
- The Respondent has made this statement without an admission of the claims made against it by the Complainant;
- The Complainant has filed its case and is entitled to a decision. Previous decisions under the UDRP have indicated that it is appropriate for a Panel to proceed to consider each of the grounds in paragraph 4(a) of the Policy in similar circumstances (Sanofi-aventis v. Standard Tactics LLC, WIPO Case No. D2007-1909; Davis+Henderson, Limited Partnership v. Whois Privacy Protection Service, Inc./Demand Domains Inc, WIPO Case No. D2008-1162);
- The Respondent’s statement is, at the date of this decision, speculative.
In these circumstances, the Panel considers that the Policy and the Rules require a decision to be made on each of the elements of paragraph 4(a) of the Policy. Paragraph 4 of the Policy requires a Complainant to prove its case. Paragraph 15 of the Rules then requires that the Panel decide the Complaint on the basis of the documents submitted in accordance with the Policy, the Rules, and any principles of law that it deems applicable.
This does not mean that the Respondent’s statement is irrelevant in these proceedings. While the Respondent has not admitted the case against it, neither has the Respondent rebutted that case. The Panel therefore has only the Complainant’s uncontested evidence.
Under paragraph 4(a) of the Policy, the Complainant must establish that it has rights in a trademark and that the disputed domain name is identical or confusingly similar to that mark. The Panel finds that the Complainant has established both of these elements.
The Complainant has provided evidence that it has rights in a registered mark for THE PAMPERED CHEF.1 These rights have also been recognized in previous proceedings under the UDRP.
The Panel finds that the disputed domain name is relevantly identical to the Complainant’s registered mark. It is a well-established principle under the Policy that the “.com.au” extension may be disregarded for the purpose of comparing a domain name to a mark. After disregarding that element, the remaining term in the disputed domain name is “thepamperedchef”. This term incorporates the Complainant’s mark entirely and exactly.
Paragraph 4(a)(ii) of the Policy requires the Complainant to establish that the Respondent has no rights or legitimate interests in the disputed domain name. This paragraph requires the Complainant to present a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once the Complainant has made a prima facie case, the burden shifts to the Respondent to refute it. See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1. The Complainant has made a sufficient case against the Respondent, and the circumstances of this case otherwise indicate a case in the Complainant’s favour.
There is no evidence in the case file that suggests that the Respondent has rights or legitimate interests in the disputed domain name. To the contrary, the Complainant provides evidence from on-line articles that the Respondent was apparently motivated to register the disputed domain name precisely because of its association with the Complainant’s registered mark. Such a motivation plainly cannot be a foundation for a right or legitimate interest under the Policy.
Bad faith may be found where a Respondent was motivated to register a disputed domain name by an intent to take unfair advantage of a Complainant’s mark. As noted above, the evidence in this case clearly suggests that this was the Respondent’s motivation. From the evidence presented of the Respondent’s website, the Respondent operates in a similar field of business to the Complainant and was, as such, very likely aware of the Complainant. The Complainant’s evidence is that the Respondent was explicitly motivated to register the disputed domain name because of its association with the Complainant’s mark.
In correspondence to the Complainant (evidenced in the Complaint) the Respondent stated that “our interpretation of ICAAN’s Uniform Domain Name Dispute Resolution Policy (para 4.a.iii) is that the domain must be registered and in use to be in breach of a trademark [emphasis in the original]”. This statement misunderstands the Policy which applies. The Policy which applies is the .auDRP, not the UDRP. Unlike the UDRP, paragraph 4(a)(iii) of the .auDRP provides that bad faith is made out where the disputed domain name is registered or subsequently used in bad faith. The evidence in this case strongly suggests that the Respondent at least registered the disputed domain name with the Complainant’s mark in mind. Further, the Respondent’s own statement about the UDRP implies that it has no contest to the claim that it registered the disputed domain name in bad faith.
For these reasons, the Panel finds that the Complainant has established that the disputed domain name was at least registered in bad faith.
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 <thepamperedchef.com.au> be transferred to the Complainant.
James A. Barker
Sole Panelist
Date: May 26, 2014
1 The Complainant’s evidence is that these registrations are held in the Complainant’s own name, and are also registered to “The Pampered Chef, Ltd”