Complainant is Doscher’s Candies, LLC of Cincinnati, Ohio, United States of America, represented by Keating Muething & Klekamp PLL, United States of America.
Respondent is Jordan Almonds International LLC of Farmingdale, New Jersey, United States of America.
The disputed domain name <frenchchew.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2016. On June 9, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 10, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 23, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 13, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 14, 2016.
The Center appointed Michael A. Albert as the sole panelist in this matter on July 25, 2016. 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.
Complainant is a company that manufactures, distributes, and sells candy. Complainant has used the trademark FRENCH CHEW continuously in connection with its taffy candy since 1871. Consumers can purchase FRENCH CHEW taffy at brick-and-mortar locations as well as through online retailers such as <amazon.com> and <walmart.com>. Complainant obtained a mark registration for FRENCH CHEW from the United States Patent and Trademark Office in 2013.
Complainant currently operates <frenchchewtaffy.com>, which redirects to <doscherscandies.com>.
The disputed domain name, <frenchchew.com>, was registered with GoDaddy.com on January 27, 2002.
Complainant alleges that the disputed domain name is confusingly similar to its FRENCH CHEW mark because it consists only of Complainant’s mark in its entirety.
Complainant also alleges that Respondent has no legitimate rights or interests in the disputed domain name because the disputed domain name, <frenchchew.com>, merely redirects to another page, <jordanalmonds.com>, which is currently a parking page. Before <jordanalmonds.com> was a parking page, it appeared to sell bulk candy, though it did not sell Complainant’s FRENCH CHEW taffy candy. Complainant alleges that consumers would type in <frenchchew.com>, rather than the more cumbersome <frenchchewtaffy.com>, seeking FRENCH CHEW taffy candy, and instead be presented with a plethora of competitors’ candy products. Because the disputed domain name currently resolves to a parking page, and previously to a site that directed consumers to competitors, Complainant alleges that there has been no bona fide offering of goods or services or legitimate noncommercial use.
Finally, Complainant alleges that Respondent registered the disputed domain name in bad faith. Respondent has been a party to several domain name disputes under the Policy, including two prior to its registration of the disputed domain name in this case. Complainant asserts that these prior proceedings gave Respondent notice that registration of trademarks as domain names could demonstrate bad faith. Complainant also asserts that Respondent knew of Complainant’s FRENCH CHEW mark and used the disputed domain name to capitalize on the mark to lure consumers to either the parking page or the site linking to competitors’ candy products.
Respondent did not reply to Complainant’s contentions.
In rendering its decision, the Panel must adjudicate the dispute in accordance with paragraph 15(a) of the Rules which provides that, “The Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 14(b) of the Rules further provides that: “If a Party, in the absence of exceptional circumstances, does not comply with any provisions of, or requirement under these Rules or any requests from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.” Paragraph 5(e) of the Rules further provides that: “If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.”
The failure of Respondent to respond does not automatically result in a favorable decision to the Complainant, which is specifically required under paragraph 4(a) of the Policy to establish each of the three elements as provided therein. The three elements are assessed below.
Complainant has demonstrated rights to the FRENCH CHEW mark. Complainant first used the mark in commerce in 1871, and has made continuous use of it since then. Complainant has obtained a trademark registration from the United States Patent and Trademark Office, and established a presence in the specialty candy market through brick-and-mortar and online sales. The FRENCH CHEW mark is in use on product packaging as well as on Complainant’s website, <frenchchewtaffy.com>.
Complainant has also demonstrated that the disputed domain name contains only Complainant’s mark, in its entirety. There is complete identity between Complainant’s FRENCH CHEW mark and the disputed domain name. The consensus view, with which the Panel concurs, is that “[n]either the addition of an ordinary descriptive word (either as prefix or suffix) nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark.” Sony Kabushiki Kaisha v. Inja, Kil, WIPO Case No. D2000-1409. The disputed domain name is therefore identical or confusingly similar to Complainant’s FRENCH CHEW mark. See Fairview Commercial Lending, Inc. v. Aleksandra Pesalj, WIPO Case No. D2007-0123.
The Panel finds that Complainant has satisfied Paragraph 4(a)(i) of the Policy.
The consensus view, with which the Panel agrees, is that while the overall burden of proof is borne by Complainant, when a complainant is (as here) faced with the impossible task of proving a negative, it need only make out a prima facie case before the burden of production shifts to the respondent.
Here, Complainant registered the FRENCH CHEW mark in 2013, but has used the mark continuously in commerce since 1871. The FRENCH CHEW mark is associated with the specialty taffy candy sold by Complainant, and is known in the specialty candy market. Further, the Panel notes that Respondent does not appear to be commonly known as <frenchchew.com>.
Complainant provided evidence that the sole purpose of the disputed domain name is to redirect ultimately to a pay-per-click advertising website containing pop-up videos, through which Respondent may collect click-through revenue from advertising links. Such use demonstrates that Respondent uses the disputed domain name to derive a commercial benefit. There is no indication that Respondent has made a bona fide use of the disputed domain name. See Legacy Health System v. Nijat Hassanov, WIPO Case No. D2008-1708 (finding that a parking page containing advertising links does not constitute a bona fide use of the disputed domain name).
Complainant has also provided evidence that prior to Respondent’s use of the disputed domain name as a parking page, it was used to redirect to <jordanalmonds.com> in an apparent effort to confuse consumers by delivering them to a site reselling bulk candy made by Complainant’s competitors. These consumers were likely seeking out Complainant’s FRENCH CHEW taffy, and through the disputed domain name were directed to Complainant’s competitors instead, becoming the victim of a classic bait-and-switch. This evidence does not demonstrate a bona fide offering of goods or a legitimate noncommercial or fair use of the disputed domain name by the Respondent. See Donald J. Trump v. Mediaking d/b/a Mediaking Corporation and Aaftek Domain Corp., WIPO Case No. D2010-1404.
Respondent’s failure to respond, coupled with Complainant’s prima facie case, are indicative that Respondent has no rights or legitimate interests in the disputed domain name.
The Panel finds that Complainant has satisfied Paragraph 4(a)(ii) of the Policy.
Complainant’s reputation in the specialty candy market, brick-and-mortar locations, and presence on the Internet at <frenchchewtaffy.com> suggest a sufficiently widespread footprint such that Respondent can be presumed (at least absent contrary evidence, of which there is none) to have known of the FRENCH CHEW mark prior to registering the disputed domain name. Respondent’s registration and use of the disputed domain name incorporating Complainant’s mark indicates an attempt to lure users into believing that the site at the disputed domain name is in some way associated with, authorized by or connected to Complainant. Respondent’s use of the disputed domain name is thus apparently designed to misdirect Complainant’s actual or potential customers. See Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517.
The record also shows that Respondent has engaged in a pattern of registering domain names that bear striking resemblance to other registered trademarks. Complainant has provided evidence that Respondent has been involved in at least four other domain name disputes, and has been deemed a “serial cybersquatter.” See Yale University v. Domain Holding Corp. AS and Eric Keller, WIPO Case No. D2013-1404; Metro Candy & Nut, Inc. v. Domain Holdings c/o Eric Keller, NAF Claim No. FA0803001159820 (Nat. Arb. Forum Apr. 28, 2008); Gallup Inc. v. Eric Keller, NAF Claim No. FA0208000098056 (Nat. Arb. Forum Aug. 21, 2001); Gallup Inc. v. Amish Country Store, NAF Claim No. FA0012000096209 (Nat. Arb. Forum Jan. 23, 2001).1 In particular, the panel in Metro Candy & Nut found that because the disputed domain name provided links to purchase competitors’ candy products, there was evidence that respondent registered the disputed domain name in bad faith because respondent intended to commercially gain from a likelihood of confusion with the complainant’s mark. See Metro Candy & Nut, Inc. v. Domain Holdings c/o Eric Keller, NAF Claim No. FA0803001159820 (Nat. Arb. Forum Apr. 28, 2008). This pattern of conduct demonstrates bad faith on the part of Respondent. See Wikimedia Foundation Inc. v. Kevo Ouz a/k/a Online Marketing Realty, WIPO Case No. D2009-0798; Playboy Enterprises International, Inc. v. Tom Baert, WIPO Case No. D2007-0968.
The Panel finds that Complainant has satisfied Paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <frenchchew.com> be transferred to Complainant.
Michael A. Albert
Sole Panelist
Date: August 1, 2016
1 While these past disputes name “Eric Keller” and not “Jordan Almonds International LLC” (i.e., the Respondent in the current dispute) as respondent, “Eric Keller” has been confirmed by the Registrar as the registrant, tech and admin name for the disputed domain name (along with “Jordan Almonds International LLC” as the organization name) . The Panel as such has no issue with finding that these previous disputes involved the Respondent.