WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Wetzel’s Pretzels, LLC v. WETZELPRETZEL.COM/Keyword Marketing, Inc.

Case No. D2008-1148

1. The Parties

The Complainant is Wetzel’s Pretzels, LLC, Pasadena, California, United States of America, represented by Ladas & Parry, United States of America.

The Respondent is WETZELPRETZEL.COM, c/o CapitolDomains LLC, Coconut Grove, Florida, United States of America /Keyword Marketing, Inc., Charlestown, Saint Kitts and Nevis.

2. The Domain Name and Registrar

The disputed domain name <wetzelpretzel.com> is registered with Capitoldomains, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2008. On July 29, 2008, the Center transmitted by email to Capitoldomains, LLC a request for registrar verification in connection with the domain name at issue. On July 29, 2008, Capitoldomains, LLC, transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 4, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 5, 2008. 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 August 7, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 27, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 29, 2008.

The Center appointed David Perkins as the sole panelist in this matter on September 8, 2008. 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

4. A. The Complainant

4.A.1 The Complainant is a leader in the snack food restaurant industry. It opened its first restaurant in 1994 at Redondo Beach, California. Currently, the Complainant’s operations include over 200 franchise and company-owned restaurants in over 30 states in the United States of America and also in Australia, Canada, Puerto Rico, Taiwan, Province of China, Republic of Korea and Saudi Arabia. Its annual sales are approximately US$65 million.

4.A.2 The Complainant plans to open franchises in many other countries around the world. It was ranked number one in the franchise business in 2007 by the publication “Franchise 500”.

Complainant’s WETZEL’S PRETZEL Trademarks

4.A.3 The Complainant is the proprietor of the following registered trademarks for WETZEL’S PRETZELS in Class 43. The mark comprises a combination of WETZEL being the name of the founder of the Complainant and the word PRETZEL.

Mark	Country	Reg. No.	Reg. Date
WETZEL’S PRETZELS	Australia	739119	05/06/1998
WETZEL’S PRETZELS	Canada	552181	10/09/2001
WETZEL’S PRETZELS	Dominican Republic	117809	01/30/2001
WETZEL’S PRETZELS	European Union	589739	02/19/1999
WETZEL’S PRETZELS	Hong Kong, SAR of China	10978/1998	04/16/2004
WETZEL’S PRETZELS	Indonesia	416326	05/12/1998
WETZEL’S PRETZELS	Japan	4263011	04/16/1999
WETZEL’S PRETZELS	Malaysia	97011011	08/08/2004
WETZEL’S PRETZELS	Mexico	662021	06/28/2000
WETZEL’S PRETZELS	New Zealand	313101	12/07/2000
WETZEL’S PRETZELS	Philippines	4-1997-125281	01/18/2004
WETZEL’S PRETZELS	Singapore	88541/97	07/23/1997
WETZEL’S PRETZELS	Republic of Korea	424857	10/13/1998
WETZEL’S PRETZELS	Taiwan, Province of China	818224	09/16/1998
WETZEL’S PRETZELS	Thailand	342126/KOR84633	08/25/1997
WETZEL’S PRETZELS	United States of America	2627228	10/01/2002

4.A.4 The US trademark for WETZEL’S PRETZELS was first used in commerce on November 23, 1994. The word “Pretzel’s” is disclaimed save as part of the composite registered mark WETZEL’S PRETZELS. That US registration was deemed incontestable by the US Patent and Trademark Office on March 15, 2008.

4.A.5 The Complainant has a pending US trademark application for WETZEL’S PRETZELS in Class 30 filed on 21 February 2008. That application is based on first use in commerce on 23 November 1994.

Complainant’s WETZEL’S PRETZELS domain name

4.A.6 The Complainant has maintained a website at <wetzelspretzels.com> since August 7, 1996.

4.B The Respondent

4.B.1 In the absence of a Response, nothing is known of the Respondent except that which is contained in the Complaint.

4.B.2 Annexed to the Complaint is a list of 45 cases brought under the Policy against the Respondent, 26 in proceedings administered by the Center and 19 in proceedings administrated by the National Arbitration Forum (NAF). These involved domain names incorporating widely or well known third party trademarks including, for example, Diners Club, Chrysler, Enterprise Rent-A-Car, The Pillsbury Company, Metropolitan Life Insurance Company and others.

4.B.3 In General Electric Company v. Marketing Total S.A., WIPO Case No. D2007-1834 it was held that the Respondent was one of 7 registrants of the disputed domain names and that all 7 registrants were essentially the same. Complainant states that it has found at least 177 cases brought under the Policy against the Respondent and those 6 other entities where the Center or NAF have been administrative authority. No Response was filed in any of those cases. Further, in all but 4 of those 177 cases the disputed domain names were transferred to the Complainant. The complainants in those cases also include the proprietor of widely or well-known trademarks. For example, Anheuser-Busch, Citigroup, Chevron, Honeywell etc, Royal Bank of Scotland and others.

5. Parties’ Contentions

5.A. Complainant

5.A.1 Identical or Confusingly Similar

5.A.1.1 The Complainant is the proprietor of the WETZEL’S PRETZELS trademarks set out in paragraph 4.A.3 above.

5.A.1.2 That trademark was first used in 1994 and is now well-known and used in the United States of America and a number of other countries worldwide.

5.A.1.3 The disputed domain name <wetzelpretzel.com> is virtually identical to the WETZEL’S PRETZELS trademark, differing only by omission of the letter “s” in both words. It remains visually and phonetically practically the same as the Complainant’s mark. Accordingly, the Complainant maintains that the disputed domain name is confusingly similar to that mark.

5.A.2 Rights or Legitimate Interest

5.A.2.1 The Complainant’s case is that the Respondent cannot establish any of the circumstances set out in paragraph 4(c) of the Policy and, accordingly, cannot demonstrate rights to or legitimate interests in the disputed domain name.

5.A.2.2 The disputed domain name was registered in July 2005, some 11 years after first use by the Complainant of its WETZEL’S PRETZELS mark, 8 years after the earliest registration of that mark (1997) and some 3½ years after registration of the US WETZEL’S PRETZELS trademark.

5.A.2.3 The Complainant has not licensed or otherwise authorised the Respondent to use the WETZEL’S PRETZELS trademark.

5.A.2.4 The disputed domain name links to, inter alia, Auntie Annes franchise and Philly Pretzel, both of which are competitors of the Complainant in the specialty restaurant business and particularly in the pretzel industry.

5.A.2.5 The disputed domain name also links to the Complainant’s mark WETZELS PRETZELS (without the apostrophe in WETZEL’S). However, when that site is accessed, it directs Internet users to additional third party commercial websites, which include competitors of the Complainant.

5.A.2.6 These are pay-per-click links from which the Respondent derives revenue.

5.A.2.7 These facts, the Complainant says, do not comprise use of the disputed domain name comprising a bona fide offering of goods or services within paragraph 4(c)(i) of the Policy, nor do they amount to a legitimate noncommercial or fair use of the disputed domain name within paragraph 4(c)(iii) of the Policy. The Complainant cites numerous cases decided under the Policy where use of disputed domain names in circumstances of the type described in paragraphs 5.A.2.4 and 5 above has been held to satisfy neither of those paragraphs of the Policy. Those cases comprise Jerry Damson, Inc. v. Texas International Property Associates, NAF Case No. FA 0702000916991; Ticketmaster Corporation v. DiscoverNet, Inc. WIPO Case No. D2001-0252; The Chip Merchant, Inc. v. Blue Star Electronics d/b/a Memory World, WIPO Case No. D2000-0474; 24 Hour Fitness USA, Inc v. 24HourNames.com – Quality Domains for Sale, NAF Case No. FA 0308000187429; DLJ Long Term Investment Corporation v. BargainDomainNames.com, NAF Case No. FA 0202000104580; WeddingChannel.com Inc. v. Andrey Vasiliev a/k/a NA and Free Domains Parking, NAF Case No. FA 0305000156716; Seiko Kabushiki Kaisha d/b/a Seiko Corporation v. CS into Tech, NAF Case No. FA 0309000198795 and Disney Enterprise, Inc. v. Dot Stop, NAF Case No. FA 0302000145227.

5.A.2.8 Nor, the Complainant says, is there any evidence that the Respondent has been commonly known by the disputed domain name within paragraph 4(c)(ii) of the Policy. The Complainant cites 3 cases under the Policy where no rights or legitimate interests were found in circumstances where – as in this case – the Respondent was not a licensee of the complainant, the complainant’s trademark rights preceded creation of the disputed domain name and the Respondent was not commonly known by the domain name. Those cases are Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403; Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020 and RMO, Inc. v. Andy Burbidge, NAF Case No. FA 0103000096949.

5.A.3 Registered and Used in Bad Faith

5.A.3.1 The Complainant’s case is that circumstances falling within paragraphs 4(b)(iii) and (iv) of the Policy are present in this case and that, consequently, the disputed domain name was registered and is being used in bad faith. This is by reason of the matters set out in paragraphs 4.B.2 to 3 and 5.A.2.2 to 5.A.2.6 above. The Complainant cites numerous cases decided under the Policy where use of disputed domain names in circumstances of the type described in paragraphs 5.A.2.2 to 5.A.2.6 above has been held to amount to registration and use in bad faith.

5.A.3.2 In relation to paragraph 4(b)(iv) of the Policy, those cases are Identigene, Inc v. Genetest Laboratories, WIPO Case No. D2000-1100; MathForum.com, LLC v. Weiguang Huang, WIPO Case No. D2000-0743; G.D. Searle & Co. v. Celebrex Drugstore, NAF Case No. FA 0208000123933; Perot Systems Corporation v. Perot.net, NAF Case No. FA 0007000095312 and Drs. Foster & Smith, Inc v. Jaspreet Lalli, NAF Case No. FA 0007000095284.

5.A.3.3 In relation to paragraph 4(b)(iii) of the Policy the cited cases are EBAY, Inc. v. MEOdesigns and Matt Oettinger, WIPO Case No. D2000-1368; Surface Protection Industries, Inc. v. The Webposters a/k/a Mark’s Paint Store, Inc., WIPO Case No. D2000-1613 and Souther Exposure v. Southern Exposure, Inc., NAF Case No. FA 00055000094864.

5.A.3.4 The Complainant also contends that because the disputed domain name links to websites of competitors of the Complainant, the Respondent must have had prior knowledge of the WETZEL’S PREZELS trademark, with the consequence that the disputed domain name could only have been registered in bad faith.

5.A.3.5 Further, where – as in this case – the Complainant’s US registered trademark has incontestable status (paragraph 4.A.4 above), the Respondent must be deemed to have had constructive knowledge of the WETZEL’S PRETZELS trademark and so registered and used the disputed domain name in bad faith: Orange Glo International, Inc v. Jeff Blume, NAF Case No. FA 0208000118313.

5.A.3.6 Still further, even if the Registrar of the disputed domain name was responsible for using that domain name to link to the third party websites described in paragraphs 5.A.2.4 and 5 above, the Complainant asserts that the Respondent (as registrant) cannot avoid a holding of use in bad faith. Here, the Complainant cites XM Satellite Radio, Inc. v. Kyle Kennedy, NAF Case No. FA 0609000796199; Ideal Products, LLC v. Manila Industries, Inc., NAF Case No. FA 0610000819490; Grisoft s.r.o v. Original WebVentures Inc. WIPO Case No. D2006-1381; Fin-Men S.p.A. v. Star Access Inc., WIPO Case No. D2007-0112 and Hospira, Inc. v. Texas International Property Associates, NAF Case No. FA 0704000959934.

5.A.3.7 Finally, the Complainant points to the Respondent’s previous history as respondent in 45 cases brought under the Policy and a total of 177 such cases where the Respondent or its alter ego was so involved as evidence of bad faith; see, paragraphs 4.B.5.2 and 3 above.

6. Discussion and Findings

6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:

(i) that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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.

6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interest in the domain name in issue.

6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.

6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.

Identical or Confusingly Similar

6.5 The Complainant has demonstrated that it has rights in the mark WETZEL’S PRETZELS and that such is a widely mark in the United States of America and in certain other countries where it is registered and used.

6.6 Given that only apostrophe and the letter “s” in that trademark are absent in the disputed domain name, it is quite clear that the domain name is confusingly similar to the trademark. Accordingly, the Complaint satisfies the requirements of paragraph 4(a)(i) of the policy.

Rights or Legitimate Interests

6.7 From the uncontested matters set out in paragraphs 5.A.2.2 to 5.A.2.6 above, it is clear that the Respondent could not establish any of the circumstances set out in paragraph 4(c) of the Policy. In the light of those matters, it is plain that the Respondent cannot demonstrate any rights to or legitimate interest in the disputed domain name and, accordingly, the Complaint fulfils the requirement of paragraph 4(a)(ii) of the Policy.

Registered and Used in Bad Faith

6.8 Equally, for all the reasons advanced by the Complainant – as to which, see paragraphs 5.A.3.1 to 5.A.3.7 – the Complaint succeeds in satisfying the two requirements of paragraph 4(a)(iii) of the Policy. Not only is there evidence falling within paragraphs 4(b)(iii) and (iv) of the Policy, but the Respondent’s past history of findings adverse to it (and entities related to it), coupled with its failure to file a Response in this case, both serve to confirm bad faith registration and use of the disputed 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 <wetzelpretzel.com> be transferred to the Complainant.

David Perkins
Sole Panelist

Dated: September 22, 2008