Mars,
Incorporated v. RaveClub Berlin
Claim Number: FA0106000097361
PARTIES
Complainant is Mars, Incorporated, McLean, VA, USA (“Complainant”) represented by Victoria JB Doyle, of Fitzpatrick, Cella, Harper & Scinto. Respondent is RaveClub Berlin, Cherry Hill, NJ, USA (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAMES
The domain names at issue are <clasicorclunker.com> and <classicorcluncker.com> registered with CORE.
PANEL
On July 13, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist.
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 4, 2001; the Forum received a hard copy of the Complaint on June 5, 2001.
On June 13, 2001, CORE confirmed by e-mail to the Forum that the domain names <clasicorclunker.com> and <classicorcluncker.com> are registered with CORE and that Respondent is the current registrant of the name. CORE has verified that Respondent is bound by the CORE 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 June 13, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 3, 2001 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@clasicorclunker.com, postmaster@classicorcluncker.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
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.” Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The
domain names <clasicorclunker.com>
and <classicorcluncker.com>
are nearly identical to the Complainant’s domain name
<classicorclunker.com> and trademark CLASSIC OR CLUNKER, which have been
in use in commerce since November of 2000.
Respondent
has no rights to or legitimate interests in the domain names <clasicorclunker.com> and <classicorcluncker.com>.
Respondent
is not now using, nor has it ever used, the domain names <clasicorclunker.com> and <classicorcluncker.com> in connection with a bona fide offering of goods or
services.
There is
no evidence that Respondent is commonly known by the domain names <clasicorclunker.com> and <classicorcluncker.com>.
Respondent
has made no noncommercial use of the domain names <clasicorclunker.com> and <classicorcluncker.com>.
By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to 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 Respondent’s website or location or of a product or service on Respondent’s website or location.
B. Respondent
No Response submitted.
FINDINGS
Since 1911,
Complainant has been and continues to be extensively engaged in the
manufacture, distribution, advertising, promotion and sale of confectionery
products, among other products, throughout the United States and
internationally. Complainant’s famous
candy brands include M&M’S®, MILKY WAY®, SNICKERS®, 3 MUSKETEERS®,
SKITTLES®, STARBURST®, and TWIX®.
Complainant is the owner of numerous U.S. trademarks Registrations for
these trademarks. Over the years,
Complainant has expended considerable money and effort building and promoting
its business, as well as goodwill in these trademarks. As a result, these candy brands have had
extraordinary success in the marketplace and are famous in the United States
and elsewhere.
Among Complainant’s many promotional activities involving
these brands is a recently launched contest called “CLASSIC OR CLUNKER”. Complainant first announced this contest to
the public in November 2000 when it posted a website at the domain name
<classicorclunker.com>. Thereafter,
in about January 2001, the “CLASSIC OR CLUNKER” contest, including the related
web address <classicorclunker.com>, was publicized on the packaging of
Complainant’s above-listed candy brands.
To date, the number of such candy wrappers in circulation in the
marketplace is in the hundreds of millions.
Based on Complainant’s marketing information, the CLASSIC OR CLUNKER
contest achieved peak consumer exposure in January 2001. The contest provides two ways in which
contestants can win a car: 1) instantly with a specially marked candy wrapper;
or 2) by entering the contest online at Complainant’s <classicorclunker.com> website. In
addition, contestants who enter the contest online can win other prizes,
besides the grand prize cars.
In connection with this promotional contest, Complainant
filed a trademark application for the trademark CLASSICS & CLUNKERS, which
is pending in the United States Patent and Trademark Office (“PTO”). This application was filed on August 29,
2000, and has been approved for registration by the PTO, although the
registration has not yet issued. Since
filing the trademark application, Complainant adopted
and is using the slightly modified trademark CLASSIC OR CLUNKER.
Respondent owns registrations for the domain names <clasicorclunker.com> and <classicorcluncker.com>, which are the subject of this complaint. These domain names are identical to
Complainant’s <classicorclunker.com> domain name and CLASSIC OR CLUNKER
trademark, except for a one-letter difference in each. Registering such obvious misspellings of
well-known trademarks and domain names is commonly referred to as
typo-squatting.
Respondent is using these domain names for pernicious
advertising purposes. The technique
being employed is called mousetrapping, which forces a web user to remain at
respondent’s website while successive browser windows open and shut, each
advertising a different good or service.
The user thereby loses control of his or her browser while Respondent’s
mousetrapping automatically opens new browser windows. Of the many advertisements displayed at
respondent’s URL, some offer the following goods and services: high-speed
wireless Internet service <find-what-you-want.org>; free music downloads <mp3-downloads.com>;
online gambling <iwin.com>, <ukcasinoclub.com>; and credit cards
<cupcakeparty.com>. Respondent
gets paid by the advertisers for every click by a web user on the browser
windows.
Complainant has received complaints from consumers who
inadvertently arrived at Respondent’s website by mistyping one letter in
Complainant’s <classicorclunker.com> domain name.
Network Solutions’ WhoIs database indicates that the domain names <clasicorclunker.com> and <classicorcluncker.com> were registered on February 27, 2001, after Complainant had launched and nationally publicized its CLASSIC OR CLUNKER contest via its <classicorclunker.com> website and on its candy wrappers, and, notably, soon after the contest achieved peak consumer exposure in January 2001.
In late April 2001, shortly after learning of Registrant’s
domain names, Complainant retained a private investigator to investigate the
Respondent, RaveClub Berlin. After
attempting to verify the address and telephone number listed on the
registrations, the investigator concluded that the information provided by the
registrant is false. Thereafter, on
April 25, 2001, Complainant sent a letter via FedEx to Respondent pointing out
the obvious and confusing similarities between Respondent’s domain names and Complainant’s
<classicorclunker.com> domain name and CLASSIC OR CLUNKER trademark. The letter demanded that Respondent
immediately cease using its domain names and transfer the names to Complainant
based on Complainant’s prior ownership and use of its domain and trademark
CLASSIC OR CLUNKER. The letter was also
sent to Respondent via e-mail on April 26, 2001.
The letter sent by FedEx was returned on April 30 after it was deemed undeliverable because the address does not exist. The e-mail was not returned, but Complainant has received no response from Respondent to date.
DISCUSSION
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.”
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
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.
Identical and/or
Confusingly Similar
Complainant had acquired common law rights to the CLASSIC OR CLUNKER mark prior to Respondent’s registration of the disputed domain names, due to Complainant’s heavily publicized advertising campaign that began in November of 2000. See BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that the Complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify Complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services).
This Panel also finds that the disputed domain names are confusingly similar to Complainant’s mark, because the <clasicorclunker.com> and <classicorcluncker.com> domain names are mere misspellings of Complainant’s mark. See Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name <hewlitpackard.com> to be identical or confusingly similar to Complainant’s HEWLETT-PACKARD mark); see also Victoria’s Secret et al. v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that misspelling words and adding letters on to words does not create a distinct mark but is nevertheless confusingly similar with Complainant’s marks).
Therefore, the Panel finds that Complainant has met the burden set forth under Policy 4(a)(i), and that Respondent registered domain names that are confusingly similar to Complainant’s CLASSIC OR CLUNKER mark.
Rights or
Legitimate Interests
Respondent has failed to come forward to demonstrate any rights or legitimate interests in the <clasicorclunker.com> and <classicorcluncker.com> domain names. See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (stating that “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”); see also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that absent any evidence of preparation to use the domain name for any legitimate purpose, the burden of proof lies with the Respondent to demonstrate that he has rights or legitimate interests).
Furthermore, there is a presumption that Respondent has no rights or legitimate interests with respect to the domain names in dispute where Respondent fails to submit a response. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that “Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the Domain Names”).
Respondents registration and use of the <clasicorclunker.com> and <classicorcluncker.com> domain names fails to demonstrate any use in connection with a bona fide offering of goods or services pursuant to the Policy ¶ 4(c)(i). Respondent’s use of the disputed domain names is not a bona fide offering of goods nor a legitimate noncommercial or fair use, because Respondent is using Complainant’s mark to lure Internet traffic to advertisements. See FAO Schwarz v. Zuccarini, FA 95828 (Nat. Arb. Forum Dec. 1, 2000) (finding no rights or legitimate interests in the domain names <faoscwartz.com>, <foaschwartz.com>, <faoshwartz.com>, and <faoswartz.com> where Respondent was using these domain names to link to an advertising website).
There is no evidence in the record, and Respondent has not come forward to establish that it is commonly known by the disputed domain names, pursuant to the Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).
The Panel therefore concludes that Respondent does not have any rights or legitimate interests in the <clasicorclunker.com> and <classicorcluncker.com> domain names, and that Policy ¶ 4(a)(ii) has been satisfied.
Registration and
Use in Bad Faith
Furthermore, because of the famous and distinctive nature of Complainant’s marks, it may be assumed that Respondent had notice of Complainant’s marks at the time Respondent registered the infringing <clasicorclunker.com> and <classicorcluncker.com> domain names. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum, Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration).
Bad faith is further evidenced by the fact that Respondent provided false registration and contact information for the <clasicorclunker.com> and <classicorcluncker.com> domain names. See Home Director, Inc. v. HomeDirector, D2000-0111, (WIPO Apr. 11, 2000) (finding that providing false or misleading information in connection with the registration of the domain name is evidence of bad faith); see also Quixtar Inv., Inc. v. Smithberger and QUIXTAR-IBO, D2000-0138 (WIPO Apr. 19, 2000) (finding that use of false registration information constitutes bad faith).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain names <clasicorclunker.com> and <classicorcluncker.com> be transferred from Respondent to Complainant.
James P. Buchele, Panelist
Dated: July 16, 2001
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