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and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fannie May Confections, Inc. v. Hong Kong Names LLC
Case No. D2006-0814
1. The Parties
The Complainant is Fannie May Confections, Inc., New York, of United States of America, represented by Kilpatrick Stockton, LLP, United States of America.
The Respondent is Hong Kong Names LLC, Hong Kong, SAR of China.
2. The Domain Name and Registrar
The disputed domain name <fannyfarmer.com> is registered with Moniker
Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 27, 2006. On June 28, 2006, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name(s) at issue. On June 30, 2006 Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on July 5, 2005. 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 July 10, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 30, 2006. The Respondent did not submit any response. Accordingly, the Center subsequently notified the Respondent’s default.
The Center appointed Mr. James A. Barker as the sole
panelist in this matter on September 13, 2006. 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 Complainant in this administrative proceeding is Fannie May Confections, Inc., a corporation organized under the laws of the State of Delaware with its principal place of business located in Chicago, Illinois.
The Complainant owns a number of trademarks and service marks on the principal register of the United States Patent and Trademark Office.
The disputed domain name has a creation date of October 4, 2001 (according to the registrar information attached to the Complaint.)
For some recent period, the disputed domain name reverted
to a directory or ‘portal’ website. The website was headed “Welcome
to fannyfarmer.com” and stated that it was “For resources and information
on Old fashioned candy and Recipes”. A number of links were included in
the site, the majority of which related to candy and chocolate.
5. Parties’ Contentions
The following contentions are summarized from the Complaint.
(i) Identical or confusingly similar
The Complainant’s rights in the FANNY FARMER Marks are strong, having been developed and maintained for more than eighty-five years. The Complainant and its predecessors, affiliates, and licensees have adopted and used a number of marks incorporating FANNY FARMER since at least 1919. The Complainant’s brand has been extensively marketed and, as a result, has become distinctive and extremely well-known.
The disputed domain name is confusingly similar to the Complainant’s mark because it consists of the Complainant’s mark exactly.
(ii) Rights or legitimate interests
The Respondent has no rights or legitimate interests with respect to the domain name. The Complainant’s use and registration of its mark predate any relevant use by the Respondent. Because of its federal trademark registrations and common law use, the Respondent has constructive knowledge of the Complainant’s mark.
A visit to the Respondent’s <fannyfarmer.com> domain reveals that the domain is being used for a search engine and portal website, providing links to a number of sites providing a wide variety of goods and services, including sites that provide sweets in competition with Complainant. Respondent is thus using the domain name to mislead and divert Internet users for the purpose of obtaining “click-through” advertising revenue.
(iii) Bad faith
The disputed domain name was registered and is being used in bad faith.
The Respondent uses the disputed domain name for a
portal site offering links to a variety of sites, including sites that feature
goods related to the Complainant’s. Respondent intends for these diverted
Internet users to click on one of the links on the Respondent’s site that
corresponds to the category for which the user was searching, including at least
one competitive chocolate provider, enabling the Respondent to collect “click-through”
revenues. The use of an infringing domain name to operate a portal site has
specifically repeatedly been found to constitute a bad faith intent to profit
under the Policy. See e.g. Humana Inc. v. Cayman Trademark Trust, WIPO
Case No. D2006-0073.
Respondent’s homepage depicts a picture of chocolate, and the page heading touts: “Welcome to fannyfarmer.com.” Before Respondent received a demand letter from Complainant, the heading also read “For resources and information on Fanny Farmer Chocolates and Recipes.”
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that, for the Complainant to succeed and have the disputed domain name transferred to it, the Complainant must establish that:
i. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
ii. the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
iii. the disputed domain name has been registered and is being used in bad faith.
The Complainant must prove all of these three elements. These elements are discussed in turn as follows.
A. Identical or Confusingly Similar
The Complainant attached evidence of its registered rights in the mark FANNY FARMER. On its own, this is sufficient to establish that the Complainant has rights for the purpose of paragraph 4(a)(i) of the Policy.
The disputed domain name is self-evidently substantially identical to the Complainant’s mark. The only difference is that there is no space between the elements “fanny” and “farmer”. However it is well established that differences of that kind are irrelevant in determining identicality. The lack of such a space is only a technical incident of the domain name.
The Panel finds that the Complainant has established this first element of the Policy.
B. Rights or Legitimate Interests
The Panel finds that the Complainant has established a prima facie case against the Respondent in relation to this second element of the Policy. The burden then shifts to the Respondent to rebut the prima facie case against it.
The Respondent has chosen to make no response to the Complainant. Neither has the Respondent made any other communication in relation to this case. As such, it has not established any rights or legitimate interests in respect of the disputed domain name.
Such a failure by the Respondent does not automatically lead to a finding against it. A panel may take into account all the circumstances of the case and evidence available. However, there is nothing in the circumstances of this case to indicate that the Respondent might have a relevant right or legitimate interest.
For these reasons, the Panel finds that the Complainant has established this second element under the Policy.
C. Registered and Used in Bad Faith
The Complainant states that the Respondent has registered and used the disputed domain name in bad faith, because the disputed domain name reverts to a “portal” website. The Complainant claims that this constitutes bad faith, within the meaning of paragraph 4(b)(iv) of the Policy. In support of this contention, the Complainant refers to a number of previous cases decided under the Policy, in which the operation of a portal site was found to constitute bad faith for the purpose of paragraph 4(b)(iv).
Paragraph 4(b)(iv) of the Policy sets out circumstances which, if found by the Panel, “shall be evidence of the registration and use of a domain name in bad faith”. Paragraph 4(b)(iv) comprises essentially 3 elements (paraphrased below), which are those indicating that the Respondent:
- by using the domain name,
- intentionally attempted to attract Internet users for commercial gain, to the Respondent’s 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 the Respondent’s web site or location or of a product or service on the Respondent’s web site or location.
The conduct of the Respondent squarely falls within the circumstances described in paragraph 4(b)(iv). Each of the elements set out in paragraph 4(b)(iv) are established in this case.
Firstly, the Respondent has clearly used the disputed domain name. There is no direct evidence that the Respondent itself created the website to which the disputed domain name reverts. However, the Respondent is, by definition, the registrant of the disputed domain name. The use of the domain name could not have been without, at the very least, the active authorization of the Respondent. That activity alone would be sufficient to establish that the disputed domain name had been used by the Respondent.
Secondly, there must be an indication that the Respondent intended to attract Internet users for commercial gain. The Respondent’s intention can be inferred from the circumstances of this case. The disputed domain name links to a website which relates to chocolate and candy, and provides links to further commercial websites which offer similar products. The Respondent’s website prominently states, at the top of each page, “Welcome to fannyfarmer.com”, and includes a prominent link titled “Fanny farmer”.
The Complainant is not based in Hong Kong, SAR of China, where the Respondent has its address, and provided no evidence that it markets its products there. However, the Complainant’s mark has been used for more than 80 years before registration of the disputed domain name. There does not appear to be any generic association between “Fanny Farmer” and the products offered on the Respondent’s website. As such, it is reasonable to infer that the Respondent in all likelihood knew of the Complainant’s mark, and the type of business associated with it, and sought to create a site relating to a similar field of business, for commercial gain.
Thirdly, the Respondent has created a likelihood of confusion with the Complainant’s mark. In this case, the disputed domain name is substantially identical to the Complainant’s mark. Being identical, there is an obvious likelihood of confusion. But the creation of confusion for the purpose of paragraph 4(b)(iv) is not limited to confusion concerning the disputed domain name itself. The likelihood of confusion can arise more generally by the Respondent’s “use” of the disputed domain name. In this case, the Respondent’s use includes the reversion of the domain name to a website which creates a confusing association with the Complainant and its mark.
The Panel finds that the Complainant has established the final element of the Policy.
Paragraph 4(b) is not exclusive of the circumstances in which bad faith may
be found, and there are other circumstances of this case that might indicate
bad faith by the Respondent. However, because of the Panel’s finding above,
it is not necessary to discuss those other circumstances.
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, <fannyfarmer.com>, be transferred to the Complainant.
James A. Barker
Dated: September 27, 2006