Chocoladefabriken Lindt & Sprüngli AG v DAVID BENSABATH
Claim Number: FA1407001572760
Complainant is Chocoladefabriken Lindt & Sprüngli AG (“Complainant”), represented by Jesper Knudsen of BrandIT GmbH, Switzerland. Respondent is DAVID BENSABATH (“Respondent”), represented by Steven L. Rinehart, Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <excellencechocolate.com>, registered with eNom, Inc.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 31, 2014; the National Arbitration Forum received payment on July 31, 2014.
On August 1, 2014, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <excellencechocolate.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 1, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 2, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@excellencechocolate.com. Also on August 1, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on September 2, 2014.
On September 5, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <excellencechocolate.com> domain name, the domain name at issue, is confusingly similar to Complainant’s EXCELLENCE mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent filed a response asserting:
1. Respondent registered the domain name June 6, 2013 and has used the generic term “excellence chocolate” in commerce as its brand since 1989.
2. Respondent has rights and legitimate interests in the domain name at issue.
3. Respondent has not acted in bad faith in registering or using the domain name at issue.
Complainant registered EXCELLENCE for chocolate in Bolivia (Reg. No. 143,318–C, registered May 23, 2013), France (Reg. No. 11–3–804–778, registered Feb. 9, 2011), Spain (Reg. No. 3,055,539, registered May 29, 2013), and Costa Rica (Reg. No. 163,996, registered Nov. 24, 2006), among other countries. Complainant has registered LINDT EXCELLENCE in three countries, Panama (Reg. No. 215,119, registered Aug 2, 2012), the United States (Reg. No. 3,344,441, registered Nov. 27, 2007, filed Aug. 21, 2006), and Canada (Reg. No. TMA709,832, registered Mar. 18, 2008). Complainant has done business in Switzerland since 1845, Canada since 1996, the United States since 2001, and elsewhere around the world. Respondent’s <excellencechocolate.com> domain name merely adds a descriptive term, “chocolate,” and the generic top-level domain ("gTLD") “.com” to the EXCELLENCE mark.
Complainant rights in EXCELLENCE are suspect when, as here, there is only limited proof of consumer recognition of the mark, and the phrase underlying the mark is a clearly generic phrase that is neither coined by nor inherently associated with Complainant.
Respondent has a legitimate interest in the domain name. Respondent has sold chocolate under the EXCELLENCE CHOCOLATE mark for a number of years—since 1989. The <excellencechocolate.com> domain name was registered in 2013 for purposes of marketing Respondent’s brand. Furthermore, the phrase underlying the domain name is essentially a descriptive term that cannot be monopolized by Complainant.
Respondent’s continuous use of the brand name EXCELLENCE CHOCOLATE since 1989 secures its right to use this domain name, and Complainant has failed to adequately address Respondent’s legitimate business and the ramifications of this legitimate endeavor on the allegations in the Complaint.
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Complainant registered EXCELLENCE for chocolate in Bolivia (Reg. No. 143,318–C, registered May 23, 2013), France (Reg. No. 11–3–804–778, registered Feb. 9, 2011), Spain (Reg. No. 3,055,539, registered May 29, 2013), and Costa Rica (Reg. No. 163,996, registered Nov. 24, 2006), among other countries. Complainant has registered LINDT EXCELLENCE in three countries, Panama (Reg. No. 215,119, registered Aug 2, 2012), the United States (Reg. No. 3,344,441, registered Nov. 27, 2007, filed Aug. 21, 2006), and Canada (Reg. No. TMA709,832, registered Mar. 18, 2008). So, the Panel finds that Complainant has some established rights in the EXCELLENCE mark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”.)
The disputed domain name <excellencechocolate> is similar to the EXCELLENCE mark in which Complainant has some established rights. The Panel holds that the disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
However, Respondent also has a legitimate interest in the domain name. Respondent has sold chocolate under the EXCELLENCE CHOCOLATE mark for a number of years—since 1989. The <excellencechocolate.com> domain name was registered in 2013 for purposes of marketing Respondent’s brand. Furthermore, the phrase underlying the domain name is essentially a descriptive term that cannot be monopolized by Complainant. What we have here are parallel, apparently long standing and legitimate usage of the descriptive term “excellence” by both parties. However, because this argument is not applicable under Policy ¶ 4(a)(i), the argument will be presented under Policy ¶ 4(a)(ii) and (iii).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Here, Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Respondent has sold chocolate under the EXCELLENCE CHOCOLATE mark for a number of years—since 1989. The Panel finds that Respondent has rights and legitimate interests in the domain name because it is commonly known by the disputed domain name through its chocolate selling business based in Montreal. See Always On UPS Sys. Inc. v. Always-On, Inc., FA 114467 (Nat. Arb. Forum Aug. 22, 2002) (finding that because the respondent submitted evidence—press release and product information—that demonstrated that it was commonly known as “always-on” since April of 2000, and it used <alwayson.com> and <always-on.com> to provide software applications to its customers, it had rights or legitimate interests in the disputed domain names).
The <excellencechocolate.com> domain name was registered in 2013 for purposes of marketing Respondent’s brand, and Respondent’s use of the domain name to promote its Belgian-style chocolate business is legitimate and bona fide within the meaning of Policy ¶ 4(c)(i). See, e.g., Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Furthermore, the phrase underlying the domain name is essentially a descriptive term that cannot be monopolized by Complainant. Respondent has established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields).
The Panel finds that Policy ¶ 4(a)(ii) has not been established.
Complainant has failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith). Clearly use of “excellence chocolate” as Respondent’s brand since 1989 defeat’s Complainant’s claim of bad faith registration of the domain name at issue in 2013.
Accordingly, since Respondent has rights or legitimate interests in the <excellencechocolate.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
The Panel finds that Policy ¶ 4(a)(iii) has not been established.
Reverse Domain Name Hijacking
Although the Panel feels that this case was not prudently brought and is without merit, there are arguably competing rights in the same essentially generic mark, and Complainant’s conduct does not seem to rise to reverse domain name hijacking.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <excellencechocolate.com> domain name remain with Respondent.
James A. Carmody, Esq., Panelist
Dated: September 10, 2014
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