Jeffrey Kaplan v. Societe des Produits Nestle S.A.
Claim Number: FA1606001680748
Complainant is Jeffrey Kaplan (“Complainant”), Florida, United States. Respondent is Societe des Produits Nestle S.A. (“Respondent”), represented by Luca Barbero of Studio Barbero Srl, Switzerland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chipwich.com>, registered with Nom-iq Ltd. dba COM LAUDE.
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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on June 22, 2016; the Forum received payment on June 22, 2016.
On June 24, 2016, Nom-iq Ltd. dba COM LAUDE confirmed by e-mail to the Forum that the <chipwich.com> domain name is registered with Nom-iq Ltd. dba COM LAUDE and that Respondent is the current registrant of the name. Nom-iq Ltd. dba COM LAUDE has verified that Respondent is bound by the Nom-iq Ltd. dba COM LAUDE 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 June 27, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 18, 2016 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@chipwich.com. Also on June 27, 2016, 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 July 18, 2016.
On July 25, 2016 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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
Complainant registered the CHIPWICH mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,062,133, registered November 29, 2011), which demonstrates its rights in that mark.
Respondent has no rights or legitimate interests in the <chipwich.com> domain name (the “Domain Name”). Respondent voluntarily surrendered its United States Federal Trademark Registration for the CHIPWICH mark (Reg. No. 1,253,994) on July 8, 2011. Further, Respondent is not an authorized distributor or representative of Complainant.
Respondent registered and is using the Domain Name in bad faith. Respondent voluntarily surrendered its intellectual property rights to the CHIPWICH mark on July 8, 2011, but it continues to re-register the Domain Name every year, thereby preventing Complainant from registering it for its business purposes. Respondent is re-registering the Domain Name to injure the Complainant’s ice cream business. Respondent is one of the world’s largest ice cream manufacturers and Complainant is a competitor.
B. Respondent
Respondent does not dispute that the Domain Name is identical to the CHIPWICH mark.
While Respondent voluntarily abandoned its USPTO registration of the CHIPWICH mark, it still holds valid trademark registrations in the CHIPWICH mark in other countries, including the European Union (Reg. No 003386571), Norway (Reg. No. 200504808), and Portugal (Reg. No. 000391093). It acquired all of these registrations, and the U.S. registration referred to above, by written assignment from the Eskimo Pie Corporation in 2007, well before the date of Complainant’s registration of its CHIPWICH mark in the U.S.. It also acquired the Domain Name at that time, by virtue of an assignment thereof from the Eskimo Pie Corporation to Dreyer’s Grand Ice Cream, a subsidiary of Respondent. This gives Respondent rights and legitimate interests in the Domain Name.
Respondent did not register and is not using the Domain Name in bad faith. It acquired the name in 2007 in good faith as a result of its acquisition of the Eskimo Pie Corporation. Further, Respondent’s passive holding of the Domain Name is not sufficient to establish that it is being used in bad faith.
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.
The Panel makes the findings and determinations set forth below with respect to the Domain Name.
Identical and/or Confusingly Similar
Complainant registered the CHIPWICH mark with the USPTO (Reg. No. 4,062,133, registered November 29, 2011). See Exhibit A to the Complaint. This is sufficient to demonstrate its rights in that mark for the purposes of Policy ¶ 4(a)(i). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
The only difference between Respondent’s Domain Name and Complainant’s mark is the addition of the generic top-level domain (“gTLD”) “.com.” The “.com” gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant). Moreover, Respondent admits that the Domain Name is identical.
Based upon the foregoing, the Panel concludes that the Domain Name is identical or confusingly similar to Complainant’s CHIPWICH mark under Policy ¶ 4(a)(i), and that Complainant has substantial and demonstrated rights in that mark.
Rights or Legitimate Interests
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden shifts to respondent to show that it does. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 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 (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.”).
To meet this burden, Respondent points out that, while it voluntarily surrendered its USPTO registration of the CHIPWICH mark in 2011, it still holds valid trademark registrations for the CHIPWICH mark in other countries, including the European Union, Norway and Portugal, all of which date from 2007 or before. See Annexes 6, 6.2 and 6.3 to Response. Respondent acquired its interest in the mark from the Eskimo Pie Corporation pursuant to a written Trademark Assignment dated January 24, 2007, a copy of which is attached to the Response as Annex 1. At about the same time, Respondent also acquired from the Eskimo Pie Corporation the registration of the Domain Name at issue in this case and caused the name to be registered in one of its subsidiaries, Dreyer’s Grand Ice Cream. See WHOIS History Search attached to Response as Annex 3, showing Dreyer’s registration as of February 2008. Respondent further submitted a screenshot of a website resolving from the Domain Name in August of 2008 showing the use of the CHIPWICH mark in commerce at that time. (Annex 4 to Response.) All of this occurred well before Complainant registered the CHIPWICH mark with the USPTO in 2011.
Respondent asserts that this gives it rights and legitimate interests in the Domain Name, referring to the WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 2.7: “Panels have tended to recognize that a respondent’s registration of a trademark which corresponds to a disputed domain name normally will, but does not necessarily, establish respondent rights or legitimate interests in that domain name for the purpose of the second element of the UDRP.” Respondent’s prior use of the Domain Name in commerce also tends to fit it within the circumstances described in Policy ¶ 4(c )(i), i.e., before notice of any dispute, the use of the Domain Name in connection with a bona fide offering of goods and services. While it is true that Respondent has ceased marketing CHIPWICH products in the U.S., this does not negate its previous use of the Domain Name for that purpose. Based upon Respondent’s continuing and current registrations of the CHIPWICH mark in Europe and its acquisition of the Domain Name itself, all dating from at least three years before Complainant registered the CHIPWICH mark in the U.S., the Panel concludes that Respondent does have rights or legitimate interests in the Domain Name. See, Immuno-Biological Laboratories, Inc. v. Dirk Boettcher/IBL International GmbH, FA 1503001611423 (Forum December 12, 2015) (“As Respondent’s use of the IBL mark predates that of Complainant’s, Respondent establishes its bona fide offering of goods or services in connection with the at-issue domain name in accord with Policy ¶ 4 (c )(i).”).
Registration and Use in Bad Faith
Considering the findings of the Panel with respect to Rights or Legitimate Interests, the Panel need not and does not address the issue of registration and use of the Domain Name in bad faith.
The Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <chipwich.com> domain name REMAIN WITH Respondent.
Charles A Kuechenmeister, Panelist
Dated: July 28, 2016
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