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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Stella D’oro Biscuit Co., Inc. v. The Patron Group, Inc.
Case No. D2000-0012
1. The Parties
Complainant is Stella D’oro Biscuit Co., Inc., 184 West 237th Street, Bronx, New York 10463, U.S.A. (Stella D’oro). Respondent is The Patron Group, Inc., 2063 Larkin Street, San Francisco, California 94109, U.S.A. (Patron).
2. Domain Name and Registrar
The domain name in issue is "stelladoro.com". The registrar is Network Solutions, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received Stella D’oro’s complaint on January 24, 2000 (electronic version) and January 27, 2000 (hard copy). The Center verified that the complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Stella D’oro made the required payment to the Center. The formal date of the commencement of this administrative proceeding is January 28, 2000.
The complaint identifies Swildens Inc., 2300 Buchanan Street, Apt. #3, San Francisco, California 94115, U.S.A., as Respondent, and states that pre-complaint dealings with respondent were addressed to:
The Patron Group
2063 Larkin Street
San Francisco, California 94109,
and an Administrative Contact for Respondent is
Swildens, Hans (HS3272) <hans@SWILDENS.com>.
On January 25, 2000, the Center transmitted via email to Network Solutions a request for registrar verification in connection with this case. On January 27, 2000, Network Solutions transmitted via email to the Center Network Solutions’ Verification Response, confirming that the registrant is Patron Group and both the administrative and billing contacts are Johan Swildens.
On January 28, 2000, the Center transmitted to "Hans@swildens. com" and "email@example.com", among others, Notification of Complainant and Commencement of the Administrative Proceeding. The Center advised that the response was due by February 16, 2000.
On the same day, the Center transmitted via facsimile copies of the foregoing documents to Johan Swildens and Hans Swildens at 1 415 346 7696. Also, on the same day, the Center transmitted via air mail copies of the foregoing documents to:
The Patron Group
2063 Larkin Street
San Franciso, CA 94109
United States of America, and
Swildens Inc./Patron Group
2300 Buchanan Street, Apt. #3
San Francisco, CA 94115
United States of America.
On January 30, 2000, Patron submitted via email to the Center Patron’s response dated January 30, 2000. On January 31, 2000, Patron transmitted via facsimile to the Center a copy of Patron’s response, signed by Hans Swildens as President and dated January 30, 2000. Patron’s response identifies The Patron Group, Inc. as respondent and Hans Swildens, President, as Patron’s representative and the person to whom communications should be sent. The response avers (paragraph 2) that Patron "purchased and owns all rights to the stelladoro.com domain name." Patron agreed (paragraph 4) "to have the dispute decided by one member of the approved list of panelists."
On February 7, 2000, the Center advised the parties via fax that Mr. David Plant had been appointed as the panelist in this proceeding and enclosed a copy of the panelist’s Statement of Acceptance and Declaration of Impartiality and Independence.
4. Factual Background; Parties’ Contentions
a. The Trademarks
The complaint is based on the trademark STELLA D’ORO, registered in the U.S. Patent and Trademark Office pursuant to five registrations, copies of which appear at Annex A to the complaint, viz.:
STELLA D’ORO Reg. No. 789,408 May 11, 1965
STELLA D’ORO Reg. No. 789,409 May 11, 1965
STELLA D’ORO Reg. No. 789,410 May 11, 1965
STELLA D’ORO Reg. No. 1,691,856 June 9, 1992
STELLA D’ORO Reg. No. 2,180,713 August 11, 1998.
Reg. No. 1,619,856 is for a service mark for "retail wholesale services of baked goods ...". Each registration notes that the English language translation of "Stella d’Oro" is "Star of Gold."
b. The Complaint
The complaint alleges (paragraph 8) that the trademark is currently used, and has been since 1939, on biscuits, cookies, crackers, toast, and bread sticks.
The grounds for the complaint are:
Paragraph 9 (A) -- The domain name is virtually identical to the trademark STELLA D’ORO.
Paragraph 9 (B) -- The term STELLA D’ORO has no meaning or significance other than as a trademark identifying Stella D’oro’s products and distinguishing them from those of competitors. Stella D’oro has been producing, selling, and marketing baked goods under the trademark STELLA D’ORO since 1939, with annual wholesale sales in excess of US$50 million. The STELLA D’ORO trademark has acquired substantial goodwill belonging exclusively to Stella D’oro. Patron has no active website under "stelladoro.com" and has no legitimate interest in the domain name.
Paragraph 9 (C) -- The domain name has been registered and used in bad faith because:
(i) The circumstances indicate that Patron registered the domain name primarily for the purpose of selling the domain name to Stella D’oro for consideration in excess of the documented out-of-pocket costs directly related to the domain name. In an email dated August 02, 1999 (Annex B to the complaint), apparently in connection with a letter a Mrs. Gallagher of Nabisco (an affiliate of Stella D’oro) had sent to Patron, Hans Swildens offered to sell to Nabisco three domain names (one of which is the domain name in issue) for $2300 each, or $6900 total. $6900 includes costs not related to acquiring or maintaining the registrations and exceeds Patron’s out-of-pocket costs directly related to the domain names.
(ii) Patron’s conduct in registering well-known trademarks supports the inference that Patron registered the domain name in issue to prevent Stella D’oro from "reflecting the mark in a corresponding domain name." Patron owns at least 57 domain names identical or virtually identical to registered U.S. trademarks of other companies, such as Nestle, General Mills, Nabisco, AT&T, Pfizer, Proctor & Gamble, and Warner-Lambert. These domain names are listed in Annex C to the complaint.
In its complaint, Stella D’oro requests that the ownership of the domain name in issue be transferred to Stella D’oro.
c. The Response
In its January 30, 2000 response to the complaint, Patron avers the following:
Paragraph 6 re Ground (A) -- The domain name in issue is not identical to Stella D’oro’s registered trademark, because the complaint alleges that the domain name is "virtually" identical and therefore is not identical.
Paragraph 6 re Ground (B) -- The representation that "the term STELLA D’ORO has no meaning or significance other than as a trademark ..." is false. The term means "Star of Gold" in Spanish. Patron owns "over 100+" domain names, some of which are in Spanish and German.
Paragraph 6 re Ground (B)(i) -- Patron alleges that the domain name is currently active and is hosted by an ISP, and Patron intends to use the domain name in the future as "an electronic commerce website - possibly for the selling of Jewelry items in Latin America." Thus, Patron alleges it does have a legitimate interest in the domain name. In addition, Patron alleges it did not and has not "actively tried to sell the domain name." Rather, Stella D’oro tried to purchase the domain name and contacted Patron first.
Paragraph 6 re Ground (C)(i) -- Patron repeats its allegations as to the sequence of contacts with Stella D’oro. Patron avers "there was no intention to sell the domain name at [the time of] purchase [of the domain name]." Patron "rejects" Stella D’oro’s "bad faith ground" and "bad faith comments." Patron alleges the primary reason for purchasing the domain name was "to secure the name for future use," and Patron was open to selling the domain name to Stella D’oro "for reasonable costs" because "the future use of the name was not finalized by the respondent." Patron further avers that Stella D’oro contacted Patron "in an attempt to build a case against" Patron. Patron states that the terms offered to Stella D’oro are no longer available. Patron "rejects" Stella D’oro’s "statement of unrelated costs" and avers Patron has devoted more than $750 of consulting time to respond to "these grounds for a complaint." Patron requests that the case be closed to limit the "ongoing cost of interacting with and communicating with the complainant."
Paragraph 6 re Ground C(ii) -- Patron realleges that it purchased the domain name to secure it for future use. Patron asserts that it has "registered hundreds of domain names and only purchased select domain names that the respondent feels do not conflict with trademarks." Patron alleges that it does not own rights to some of the domain names on Stella D’oro’s list.
Patron requests that "this case be closed immediately and the complainant is asked to discontinue all communications with the respondent."
5. Discussion and Findings
Paragraph 4.a. of the Policy directs that Stella D’oro must prove each of the following:
(i) The domain name in issue is identical or confusingly similar to Stella D’oro’s trademark and service mark, and
(ii) Patron has no rights or legitimate interests in respect of the domain name, and
(iii) The domain name has been registered and is being used in bad faith.
Paragraph 4.b. of the Policy sets out four illustrative circumstances, which for purposes of Paragraph 4(a)(iii) above shall be evidence of the registration and use of a domain name in bad faith.
Paragraph 4.c. of the Policy sets out three illustrative circumstances which, if proved by respondent, shall demonstrate respondent’s rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii) above.
a. Identity or Confusing Similarity
Stella D’oro urges only "virtual" identity. It does not urge confusing similarity. Thus, Stella D’oro must prove that the domain name in issue is "identical’ to its trademark or service mark.
On its face, the domain name in issue is for purposes of this dispute identical to the Stella D’oro trademark and service mark. The absence of an apostrophe plus Stella D’oro’s averment of only "virtual" identity do not detract from this conclusion. That "Stella D’oro" has a discrete and identifiable meaning in Spanish, as Stella D’oro’s trademark registrations state, does not detract from the identity of the domain name in issue with the Stella D’oro trademark.
b. Rights or Legitimate Interests
The resolution of the question of the legitimacy of Patron’s interest in the domain name is not so easy. Nevertheless, on this record, Patron’s unsupported assertions are more than countered by the circumstantial evidence. Importantly, Patron levels no challenge to the trademark and the service mark, or Stella D’oro’s rights in those marks, with respect to Stella D’oro goods and services. On careful analysis, Patron’s speculations as to intended future use and "possibly" selling "Jewelry items in Latin America" do not offset the inference flowing from the undisputed facts and circumstances appearing in the pleadings. Thus the record shows that Stella D’oro has carried its burden of proving Patron has no legitimate interest in the domain name in issue. The relevant facts and circumstances are:
(1) Patron concededly "owns" more than 100 domain names. Stella D’oro’s list of more than 50 domain names associated with Swildens Inc., an apparent affiliate of Patron, reveals many well-known terms used by well-known global companies to denote their products and services -- ranging across many categories of goods and services. Patron’s asserted ownership of more than 100 well-known terms readily suggests more than coincidence in Patron’s selection of those domain names, and much more than an attempt to avoid "conflict" with trademarks. Rather, it suggests a studied selection of domain names for the purpose of profiting from activities other than maintaining more than 100 active websites for providing goods and services in commerce. Patron’s averment that it purchased only "select domain names that the respondent feels do not conflict with trademarks" simply does not ring true.
(2) This record supports the inference that it is highly unlikely that Patron could legitimately use each of the more than 100 domain names it assertedly owns in providing goods and services in commerce. Patron’s conduct in acquiring such domain names suggests strongly that, contrary to its professed intent regarding legitimate commercial use, Patron intended and continues to intend to profit from sales of Patron’s rights in those domain names.
(3) If Patron legitimately intended to use the domain name in issue here to sell "Jewelry items in Latin America," Patron could easily have adduced evidence in support of its naked assertion. Given Patron’s asserted ownership of more than 100 domain names, clearly of the kind here in dispute, it is entirely appropriate to expect Patron to tender to this Panel more than wishful speculation about vaguely identified activities in Latin America. This does not improperly shift the burden of proof on this requirement to Patron. It simply requires Patron to adduce evidence to counter the inference that necessarily flows from the circumstances and undisputed facts pleaded by Stella D’oro.
(4) In August 1999, Patron was willing to sell the domain name in issue to Stella D’oro’s affiliate Nabisco for $2300. This willingness at this price is inconsistent with Patron’s having a legitimate interest in using the domain name as an active website to provide goods and services in commerce. An active website should produce revenues far in excess of $2300.
c. Bad Faith
Registration and use of the domain name in issue in bad faith is also a matter of the appropriate inference to draw form circumstantial evidence. There is no evidence that the domain name has in fact been used in commerce as a website by Patron. We have only Patron’s unsupported assertion that the "domain name IS currently active and is hosted by an ISP," and the January 24, 2000 email verification by Network Solutions that the domain name registration "is in ‘Active’ status." Patron’s offer to sell to Stella D’oro’s affiliate Nabisco the domain name for a profit strongly implies that the Patron domain name is "active" in only a technical sense.
Patron’s real purpose in acquiring the domain name in issue is revealed in the August 02, 1999 email from Hans Swildens, viz.:
"To make a profit on the work, we need to charge this amount [$2300] per name."
The email continues:
"Since you have three names you could purchase, the process can be duplicated and we might be able to save some costs. Therefore a purchase price of $6,900 for three names sounds reasonable. If you accept these terms, I can have a contract drafted and emailed to you."
These are not the proposals or prices of a proprietor of a commercial website who is selling a commercial address of value intrinsic to the proprietor.
Moreover, in addition to the seven owners of trademarks mentioned in Stella D’oro’s complaint, other owners of trademarks "identical or virtually identical" to domain names allegedly registered to Patron (or an affiliate) include MCI, Merrill Lynch, Hershey Foods, Kraft General Foods, Clorox, Colgate-Palmolive, Ralston Purina, and Revlon (Annex C to the complaint).
Manifestly, it is fair to infer that Patron’s real business is to acquire domain names and to sell them for profit. Stella D’oro’s exemplary list of domain names identified with Patron (Annex C to the complaint) implies strongly that Patron’s policy and practice are to trade on the value of the marks it has registered as domain names by way of selling the domain names to the long-time owners of the marks or by otherwise interfering with the owners’ rights to use their marks in commerce. Indeed, in addition to offering the domain name in issue to Nabisco "to make a profit," Hans Swildens’ email of August 02, 1999 to Mrs. Gallagher of Nabisco, asserts "we sold two domains to another company for $5,000 each to cover our costs and make it a profitable transaction." Significantly, Mr. Swildens’ email of August 02, 1999, is entirely silent with regard to any consideration for Patron’s lost opportunity to use the domain names as its own commercially active websites.
Thus, this record reveals only evidence of Patron’s using and profiting from its alleged registrations of hundreds of domain names simply and only by sales at a profit to others.
d. Paragraph 4.c. Factors
Patron has failed to prove any of the three circumstances set out in Paragraph 4.c. of the Policy, viz.:
(i) before any notice to Patron of the dispute, Patron’s use of or preparations to use the domain name were in connection with a bona fide offering of goods or services,
(ii) Patron or a related entity has been commonly known by the domain name, and
(iii) Patron is making legitimate noncommercial or fair use of the domain name, "without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
In light of the foregoing, the Panel decides that the domain name registered by Patron is identical to the trademark and service mark of Stella D’oro, Patron has no legitimate interests in respect of the domain name, and the domain name in issue has been registered and is being used in bad faith.
Accordingly, the Panel requires that the registration of the domain name "stelladoro.com" be transferred to Stella D’oro.
In light of the foregoing, the Panel declines to address Patron’s request that Stella D’oro "discontinue all communications with the respondent."
David W. Plant
Dated: February 17, 2000