Mars, Incorporated v.
Richard Grack
Claim Number: FA0807001217837
PARTIES
Complainant is Mars, Incorporated (“Mars”), represented by Ross
Q. Panko, of Arent Fox LLP, Washington, D.C., USA. Respondent is Richard Grack (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dovechocolatediscoveries.com>,
registered with GoDaddy.com, Inc.
PANEL
The undersigned certifies that he has acted independently and
impartially and to the best of his knowledge has no known conflict in serving
as Panelist in this proceeding.
Hon. Charles A. Kuechenmeister (Ret.)
PROCEDURAL HISTORY
Mars submitted a Complaint to the National Arbitration Forum
electronically on July 28, 2008; the
National Arbitration Forum received a hard copy of the Complaint on July 29, 2008.
On July 29, 2008, GoDaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <dovechocolatediscoveries.com> domain
name is registered with GoDaddy.com, Inc.
and that the Respondent is the current registrant of the name. GoDaddy.com,
Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and
has thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On July 31, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of August 20, 2008 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent via e-mail,
post and fax, to all entities and persons listed on Respondent’s registration
as technical, administrative and billing contacts, and to postmaster@dovechocolatediscoveries.com by e-mail.
A timely Response was received and determined to be complete on August 18, 2008.
Mars submitted an Additional Submission on August 21, 2008 that was
determined to be timely and complete pursuant to Supplemental Rule 7.
Respondent submitted an Additional Submission on August 25, 2008 that
was determined to be timely and complete pursuant to Supplemental Rule 7.
On August 28, 2008, pursuant to Mars’ request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed the Honorable Charles A. Kuechenmeister (Ret.) as Panelist.
RELIEF SOUGHT
Mars requests that the domain name be transferred from Respondent to
Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
1.
Complainant,
Mars, Incorporated (herein “Mars”), is the owner of all rights and interest in a
variety of marks containing or comprised of DOVE, and DOVE CHOCOLATE, including
DOVE, DOVE CHOCOLATE AT HOME, and DOVE & DESIGN (collectively the “Dove
Marks”). The Dove marks are well known
and famous, and consumers immediately recognize these marks as distinctive
symbols of Mars’ goodwill.
2.
Mars
owns valid and enforceable trademark registrations in the
3.
Mars
owns three intent-to-use applications for marks containing the wording
“CHOCOLATE DISCOVERIES,” all of which were filed before Respondent registered
the disputed domain name, <dovechocolatediscoveries.com> (the “Domain Name”).
4.
The Dove
Marks are extensively used, advertised and promoted throughout the
5.
Without
authorization from Mars, Respondent registered the Domain Name on or about
April 28, 2008, long after the Dove Marks became well-known to consumers as
signifying the source of Mars’ chocolate products. Such registration occurred shortly after his
wife, a participant in Mars’ Dove Chocolate at Home venture, received an
information packet from Mars disclosing its intent to launch a brand under the
name DOVE CHOCOLATE DISCOVERIES and to acquire the corresponding domain name <dovechocolatediscoveries.com>.
6.
Prior to being contacted by Mars, Respondent used the Domain
Name in connection with a commercial website that provided multiple links to
commercial websites advertising chocolate and goods containing chocolate,
including <FineImportedChocolate.com>, <acai-chocolate.com>, <DarkChocolateForChocolateLovers.com>,
<EatHealthyChocolate4Life.com>, and many others. Many of these websites are owned by entities
that compete with Mars in the chocolate industry.
7.
On June 17, 2008 Mars’ outside counsel sent an e-mail to
Respondent requesting that he transfer the Domain Name to Mars. Respondent replied by e-mail the following
day, refusing to do so.
8.
The
Domain Name is confusingly similar to the Dove Marks. It wholly incorporates Mars’ DOVE mark. The mere addition of the generic words
“chocolate” and “discoveries” is not sufficient to alleviate confusion with
Mars’ Dove Marks, especially since those marks are famous for chocolate. Thus, the addition of those words does not
distinguish the Domain Name from Mars’ marks, and in fact creates an
association between the Domain Name and Mars.
Registration and use of such a domain is confusingly similar under ICANN
Policy ¶ 4(a)(i).
9.
The
likelihood of consumer confusion is enhanced by Respondent’s use of the Domain
Name to display numerous websites and trademarks owned by competitors of Mars.
10.
Where,
as here, a complainant makes a prima
facie showing that the challenged domain name is identical or confusingly
similar to its protected mark, the burden shifts to the respondent to show that
it has rights or legitimate interests in the name. Respondent cannot satisfy that burden. In does not own any trademark or service mark
registration that is identical, similar, or in any way related to the Domain
Name or the Dove Marks, nor does he use a personal name, company name or title
that incorporates the Dove Marks.
Respondent has not made any bona
fide offering of goods or services in connection with the Domain Name but
merely uses it in connection with a website collecting links to other parties’
chocolate-related websites. This does
not constitute a bona fide offering
of goods or services.
11.
12.
Respondent
registered the Domain Name with actual and constructive knowledge of Mars’
rights in the Dove Marks, and with knowledge of its long history of using those
marks in connection with chocolate products prior to such registration. He did so with the intent to play off the
significant goodwill that Mars has established in its Dove Marks.
13.
Respondent’s
particular use of the Domain Name, i.e.,
to display numerous links to websites owned by Mars’ competitors and other
third-party sites advertising and selling chocolate heightens the likelihood of
confusion and constitutes bad faith.
14.
Respondent’s
bad faith is further evidenced by the timing of his registration of the Domain
Name. As described earlier, he
registered the same shortly after his wife, a participant in Mars’ Dove
Chocolate at Home venture, obtained an information packet from Mars disclosing
its plans to launch a brand under the name DOVE CHOCOLATE DISCOVERIES and to
acquire the Domain Name in pursuance of such plans. Respondent learned of Mars’ plans and
registered the Domain Name in order to benefit from misdirected Internet
traffic from consumers seeking information about the DOVE CHOCOLATE DISCOVERIES
brand. This is the epitome of bad faith.
15.
Respondent
has made no legitimate noncommercial or fair use of the Domain Name.
B.
Respondent
1.
Respondent
is married to Dawnmarie U. Grack. On or
about March 25, 2008 Mrs. Grack paid Dove Chocolate at Home (“DCAH”), one of Mars’
ventures, approximately $426 to join the DCAH multi-level marketing
organization. Upon paying such fee she
became a DCAH “Chocolatier.”
2.
Respondent
and Mrs. Grack have been involved with many “home-party” companies and they, as
a couple, operate the businesses together.
In addition to the DCAH registration fee, Respondent and Mrs. Grack
purchased inventory and collateral material, and registration and deposits on
trade shows were made. All of the funds
so paid were provided by Respondent.
3.
A
primary selling point of the DCAH organization is the cachet of being able to
use the Dove name. Chocolatiers are
independent contractors and marketing is left to them. Mr. and Mrs. Grack invested a significant
amount of time and money promoting the DCAH brand. DCAH provided a website service on which Mrs.
Grack had a website (http://dovechocolateathome.com/sites/dawnmarie). She and Respondent together had a legitimate
interest in the DOVE CHOCOLATE AT HOME name.
A great deal of the goodwill Mars references in its Complaint is
provided by the Chocolatiers.
4.
After
making significant investment in the DCAH brand name, Respondent & Mrs.
Grack began hearing rumors that Mars would be changing the name. These rumors had many public sources. Respondent began monitoring domain names for
a name suitable to leverage the DCAH license and also incorporate the rumored
name change. Much to Respondent’s
surprise, the rumored new name was not trademarked, nor was there an
application to trademark it, nor was a domain name incorporating it registered.
5.
When the
rumors became overwhelming, i.e.,
reached a level of obvious public knowledge, Respondent decided to register the
Domain Name to protect his investment and ensure that the name was “kept within
the family.” He assumed at the time that
if the re-branding happened, someone from DCAH would send a simple e-mail
offering to pay the out-of-pocket expenses of the registration and perhaps even
thank him for protecting the Domain Name.
6.
The
alleged commercial website described in the Complaint and shown on Exhibit F to
the Complaint is an automated page that was displayed by GoDaddy.com, the
Registrar. When Respondent registered
the Domain Name he believed that he had caused it to be “parked” on a holding
page made available by or through the Registrar. As such the website had no associated web
server and in effect the Registrar, not the registrant, has total control over
what is displayed. When Respondent
learned from Mars’ counsel that the holding page was acting as a search page he
immediately replaced it with a blank page.
7.
Respondent
never used the Domain Name to attract Internet users for commercial gain. Mars’ only evidence that he did was the GoDaddy.com
parking page, which Respondent removed immediately upon being notified of its
existence. Respondent never received any
commercial gain from any use he made or caused to be made of the Domain Name.
8.
Respondent’s
first contact from Mars was a demand from its outside counsel, sent by e-mail
on June 17, 2008, demanding immediate transfer of the Domain Name and
threatening further legal action.
Respondent replied by e-mail on June 18, 2008, stating that Mars’ facts
were incorrect, that he had not used the Domain Name to link to any other
commercial sites and thus was not acting in bad faith under the Policy, and
that Mars did not have exclusive rights to the Dove name. He stated that he would not be transferring
the Domain Name to anyone.
9.
10.
Neither
Respondent nor Mrs. Grack has ever seen the information packet allegedly sent
by Mars in April, nor did they ever speak with anyone at Mars at or about that
time concerning its proposed use of DOVE CHOCOLATE DISCOVERIES as a brand name.
11.
Respondent
was willing to transfer the Domain to Mars at any time a representative of Mars
requested such transfer and offered to pay Respondent’s out-of-pocket expenses
of registering the same. He now asserts,
however, that the Domain Name should not be transferred because of Mars’
failure to sustain its burden under the Policy.
C. Additional Submissions
Complainant:
1.
Regardless
of the source of his information at the time, Respondent knew or was reasonably
certain that Mars was planning to use the name DOVE CHOCOLATE DISCOVERIES as a
brand when he registered the Domain Name.
2.
Respondent’s
bad faith in registering the Domain Name is evidenced by the fact that prior to
the filing of his Response he never expressed a willingness to transfer the
Domain Name for payment of out-of-pocket costs or for any other
consideration. He expressly stated in
his email on June 18, 2008 that he would not transfer it to anyone.
3.
Regardless
of the fact that the links to websites of Mars’ competitors may have been
furnished by GoDaddy.com, not Respondent, he is legally responsible for those
links and their existence is evidence of his bad faith.
4.
Respondent’s
interest in the DOVE CHOCOLATE AT HOME name existed only because his wife, as a
Chocolatier, was licensed by Mars to use it.
That license terminated when Mars terminated Mrs. Grack’s affiliation
with DCAH on July 15, 2008. Mars never
authorized Respondent to use the Domain Name or its DOVE CHOCOLATE DISCOVERIES
mark.
Respondent:
1.
Respondent’s
registration of the Domain Name was for the sole purpose of protecting it for
future use by his and his wife’s DCAH venture, in conjunction with Mars, after
he observed that Mars was not taking reasonable steps to acquire the Domain
Name for its use and use by its Chocolatiers.
It was not done in bad faith.
2.
Respondent’s
interest in his and Mrs. Grack’s DCAH Chocolatier business, including the http://dovechocolateathome.com/sites/dawnmarie
website, gave him the right to register the Domain Name at the time he did, as
there was no written policy from Mars prohibiting this action.
3.
Respondent’s
having created a situation in which the Domain Name resolved to other websites
was unwitting and unintentional. He
thought it would be kept out of search engines.
The only way to reach the website represented by the Domain Name would
be to type it directly into a browser. Respondent
was trying to keep it from attracting Internet traffic because any traffic it
did attract would be diverted away from his DCAH business, not to it. He never used it for commercial gain or to
prevent the rightful owner from registering it, and thus there is no bad faith.
DISCUSSION AND FINDINGS
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint on the basis of the statements and documents submitted in accordance
with the Policy, these Rules and any rules and principles of law that it deems
applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(1) the domain name registered by the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and is
being used in bad faith.
Mars’s
registration of the mark DOVE with the USPTO (Reg. 1,415,202 issued Oct. 28,
1986) is sufficient to establish its rights in that mark for purposes of Policy
¶ 4(a)(i). See Lockheed Martin
Corp. v Hoffman, FA 874152 (Nat.
Arb. Forum Jan. 31, 2007) (finding that the complainant had sufficiently
established rights in the SKUNK WORKS mark through its registration with the
USPTO); see also Metro. Life Ins. Co. v. Bin g Glu, FA 874496
(Nat Arb. Forum Feb. 13, 2007) (finding rights in the METLIFE mark as a result
of its registration with the
Respondent’s <dovechocolatediscoveries.com> domain name is confusingly similar to Mars’s DOVE mark, especially considering the strong association in the marketplace of the name DOVE with the product chocolate. Further, the addition of a top-level domain designation and generic terms with a direct relationship to Mars’s business are not sufficient to distinguish Respondent’s domain name from Mars’s mark for purposes of Policy ¶ 4(a)(i). See Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that the respondent’s domain names, which incorporated the complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity); see also Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). Similarly, the addition of the generic top-level domain “.com” is not a distinguishing characteristic under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
The Domain Name is identical or
confusingly similar to the DOVE Marks, in which Complainant has substantial and
demonstrated rights.
Mars asserts and has presented evidence that
Respondent does not own any trademark or service mark registration that is
identical, similar, or in any way related to the Domain Name or the Dove Marks,
nor does he use a personal name, company name or title that incorporates the
Dove Marks. It also asserts that Respondent
has not made any bona fide offering of goods or services in connection with the
Domain Name but merely uses it in connection with a website collecting links to
other parties’ chocolate-related websites, which does not constitute a bona fide offering of goods or services.
Complainant having thus made a prima facie case in support of its allegations that Respondent has no right or legitimate interest in respect of the Domain Name, the burden shifts to Respondent to show that he does possess rights or legitimate interests pursuant to Policy ¶ 4(c). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Respondent has failed to produce evidence
supporting any rights or legitimate interest he may have in respect of the
Domain Name. He claims a legitimate
interest based upon his involvement in his and his wife’s business as a
licensed Mars DCAH Chocolatier and Mars’s authorization for her and, by
extension, Respondent to use DOVE marks in her http://dovechocolateathome.com/sites/dawnmarie
website in connection with that business.
That authorization terminated, however, on July 15, 2008, when Mars
terminated her status as a Chocolatier.
Mars never authorized either Respondent or his wife to register the
Domain Name or to use the DOVE CHOCOLATE DISCOVERIES brand in any way.
Respondent does not contend that links to
other businesses on the parking page established for the Domain Name constituted
a bona
fide offering of goods or services
under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy
¶ 4(c)(iii).
The name of Respondent does not contain any form
of the name DOVE or any variation thereof.
Neither is he commonly known by the Domain Name and as a result, he has failed to
establish rights or legitimate interests under Policy ¶ 4(c)(ii). See IndyMac
Accordingly, the Panel finds and determines
that Respondent has no rights or legitimate interests in respect of the Domain
Name.
First, as to the website resolving
from the Domain Name, that website initially contained links to other websites
representing businesses that competed in the chocolate industry with Mars. Respondent states that he believed that since he had caused the name
to be “parked” on a page without content, it would not appear in any search
engine, and would not attract Internet users.
Additionally, he states, the Registrar, not the Respondent, had control
over what was displayed, and thus Respondent was not responsible for the links
to the competing sites. It is settled,
however, that
the registrant of a domain name is ultimately responsible for the content of a
website that resolves from it. See StaffEx Corp. v. Pamecha, FA 1029545 (Nat. Arb. Forum Aug. 27,
2007) (“Respondent has alleged that the registrar, GoDaddy, has posted these
[competing] links for the website associated with the Domain Name. However, the Panel finds this is no excuse
and holds Respondent accountable for the content posted to the site that
resolves from the Domain Name.”); see also
Netbooks, Inc. v. Lionheat Publ’g, FA 1069901 (Nat. Arb. Forum Oct. 18,
2007) (“The Panel also notes that Respondent is responsible for the content of
any website using the domain name at issue, and cannot pass that responsibility
off to its registrar or domain name service provider.”). The Respondent is responsible for the content
of the website, and he must accept the consequences of and any and all
inferences to be drawn from that content.
There is no question that Respondent’s registration and use of the Domain Name as above described created a likelihood of confusion with Mars’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. See Policy ¶ 4(b)(iv). Nevertheless, there is no evidence that Respondent intended to, or did, receive any commercial gain whatsoever from this use. He states on the contrary that it was his intent not to attract the attention of Internet users, and even if the website did attract such attention, Respondent never profited or received any economic gain as a result. These assertions are uncontroverted. The motive for economic gain appears from the plain language of Policy ¶ 4(b)(iv) to be an essential element of proving bad faith under this paragraph, and there is no evidence to sustain a finding of such motive here.
It has been held that a registrant
who uses a domain parking service provider, as Respondent did in this case, in
effect licenses the provider to use his domain name, and he receives economic
benefit from the arrangement. See
Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007). (“The Panel has no doubt that these parking
arrangements are structured for the purpose of attacting, for commercial gain,
Internet users by creating a likelihood of confusion with the VANCE Marks,
whether or not Respondent receives a penny of the click-through
revenues.”) This case, however, is
distinct from Vance. There, the Panel found that the respondent’s
purpose in parking the disputed domain names was to attract third parties
interested in purchasing them, that his real profit from the arrangement would
be gained only if the complainant saw what was going on and felt compelled to
purchase the names.
When Respondent registered the Domain Name, he knew or was reasonably certain that Mars was planning to launch a new brand by the name DOVE CHOCOLATE DISCOVERIES, which is literally identical to the Domain Name, and was planning to acquire the Domain Name for itself in connection with that brand. Respondent admits this. He also knew that Mars had a pre-existing legitimate interest in the DOVE Marks in connection with the distribution and sale of chocolate products, inasmuch as he was directly involved in a business that marketed Dove chocolate products under a license from Mars. He was not authorized by Mars to register the Domain Name and he himself had no right or legitimate interest in the name DOVE CHOCOLATE DISCOVIES. Notwithstanding his claim to have registered the Domain Name to “keep it in the family,” to reserve it for future use to protect his investment in his own business as a DCAH Chocolatier, from which Mars also benefited, he was not lawfully entitled as against Mars to register the Domain Name in his name.
Respondent asserted
a facially plausible reason, not consistent with bad faith, for his having
registered the Domain Name when he did, i.e., to protect it for future use
in connection with the DCAH venture in which both Respondent and Mars were
participants. Additionally, there is no
evidence that Respondent had a practice of registering or acquiring domain
names with the primary intent of selling them to the legitimate owners of marks
incorporated into them, which distinguishes this case from the circumstances
involved in Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum
June 8, 2007) (“Respondent is highly opportunistic in respect of domain
names and acquires them primarily for the purpose of re-sale rather than for
use in his other businesses.”).
Nothwithstanding the
foregoing, two factors present here compel a finding of bad faith registration
and use. First, his registration of the
Domain Name was clearly wrongful as against Mars. He had no right to register it in his own
name. He could not have made any active
commercial use of the name himself without directly infringing on the
establsihed rights of Mars to the name DOVE CHOCOLATE DISCOVERIES. See
Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith
registration and use where it is “inconceivable that the respondent could make
any active use of the disputed domain names without creating a false impression
of association with the Complainant”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4,
2000) (finding that the “domain names are so obviously connected with the
Complainants that the use or registration by anyone other than Complainants
suggests ‘opportunistic bad faith’”).
Secondly,
Respondent has persisted in his refusal to transfer the Domain Name to Mars,
notwithstanding Mars’ clearly superior claim to the name DOVE CHOCOLATE
DISCOVERIES and the corresponding Domain Name.
The time for him to have transferred the name to Mars, had he registered
it with the intent of “protecting” it, passed long ago. His continued refusal to do so strongly
suggests that his motives in registering the name himself were other than as he
asserted and that he intended instead to deny Mars the ability to register and
use the Domain Name. His initial
registration of the Domain Name and continued refusal to transfer it to Mars
fall within the parameters of Policy ¶ 4(b)(ii),
as what has become a pattern of registering and using the Domain Name simply to
prevent Mars, as the owner of the mark DOVE CHOCOLATE DISCOVERIES, from
reflecting that mark in its corresponding domain name. This constitutes bad faith under the Policy.
The Panel is not unmindful of the fact that for purposes of Policy ¶ 4(b)(ii) “pattern” has frequently been
taken to mean numerous registrations by one person of domain names
incorporating marks owned by other persons.
See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum
Sept. 8, 2000) (“Registration of more than one domain name that infringes on
another’s registered mark(s) supports the inference that Respondent knew of
Complainant’s marks upon registering the domain names . . . [and t]he
registration of multiple domain names that infringe on Complainant’s trademarks
is evidence of a pattern of conduct.”); EPA European Pressphoto Agency
Accordingly, the Panel finds and determines
that Respondent has registered and is using the Domain Name in bad faith.
DECISION
Mars having established all three elements required under the Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dovechocolatediscoveries.com> domain
name be TRANSFERRED from Respondent to Complainant.
Honorable Charles A.
Kuechenmeister (Ret.)
Dated: September 18, 2008