Hershey Chocolate & Confectionery Corporation v. Ralph Ward
Claim Number: FA0512000608687
Complainant is Hershey Chocolate & Confectionery Corporation (“Complainant”), represented by Kathleen S. Herbert of Setter Ollila, LLC, 2060 Broadway, Suite 300, Boulder, CO 80302. Respondent is Ralph Ward (“Respondent”), P.O. Box 578, Lynn, MA 01903.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <myhershey.com>, registered with Go Daddy Software, 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 December 12, 2005; the National Arbitration Forum received a hard copy of the Complaint on December 14, 2005.
On December 13, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <myhershey.com> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 December 14, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 3, 2006 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@myhershey.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 9, 2006, 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <myhershey.com> domain name is confusingly similar to Complainant’s HERSHEY’S mark.
2. Respondent does not have any rights or legitimate interests in the <myhershey.com> domain name.
3. Respondent registered and used the <myhershey.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Hershey Chocolate & Confectionary Corporation, has manufactured and sold chocolate bars and other confectionary items for more than a century under the HERSHEY’S trademark. Complainant holds many registrations for the HERSHEY’S mark in various countries including Registration Number 54,041, registered February 8, 1906 with the U.S. Patent and Trademark Office (“USPTO”).
Respondent, Ralph Ward, registered the <myhershey.com> domain name on December 18, 2004. The website associated with the disputed domain name espouses that “The End Is Near...” and lists the Ten Commandments, including a photo with a sign reading “THE END IS NEAR” with a caption that reads “Repent.” Below the Ten Commandments, the website lists contact information: “Email us at: bostonhippy@hotmail.com” and “Visit us at: http://www.jesussaves.org.uk.”
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 Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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 offers its trademark registrations as proof that
is has rights in the HERSHEY’S mark.
The Panel finds that Complainant has established rights in the HERSHEY’S
mark pursuant to Policy ¶ 4(a)(i). See
Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”); Vivendi Universal Games v. XBNetVentures Inc., FA 198803
(Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations
establish Complainant's rights in the BLIZZARD mark.”).
The Panel finds that Respondent’s <myhershey.com>
domain name is confusingly similar to Complainant’s HERSHEY’S mark because it
removes the apostrophe and letter “s” and adds the word “my,” which does not
significantly distinguish the domain name from the mark. See Chi-Chi’s, Inc. v. Rest. Commentary,
D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to
be identical to the complainant’s CHI-CHI’S mark, despite the omission of the
apostrophe and hyphen from the mark); Universal City Studios, Inc. v.
HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the
letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change
the overall impression of the mark and thus made the disputed domain name
confusingly similar to it); ESPN, Inc. v. MySportCenter.com, FA 95326
(Nat. Arb. Forum Sept. 5, 2000) (finding that the “domain name
MYSPORTSCENTER.COM registered by Respondent is confusingly similar to
Complainant’s SportsCenter mark”).
The Panel finds that Complainant has established Policy ¶ 4(a)(i).
In the absence of a Response, the Panel is left to examine
the record to determine if Respondent has rights or legitimate interests in the
disputed domain name. The Panel cannot
infer a right or legitimate interest from Respondent’s appropriation of
Complainant’s mark to display its apocalyptic message and the Ten Commandments;
it is neither a bona fide offering of a good or service pursuant to
Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy
¶ 4(c)(iii). See Fox News Network,
LLC v. Solomon, D2005-0022 (WIPO Mar. 25, 2005) (“Respondent does not use
the Disputed Domain Name to designate a website for criticism and commentary
about Complainant. Instead, the Panel concludes that Respondent registered the
Disputed Domain Name to take advantage of the wide notoriety of Hannity,
Colmes, and the Program in order to gain access to the Program’s large
audience. The Panel finds that such a use of the Disputed Domain Name does not
constitute a fair use within the meaning of the Policy and that Respondent has
no rights or legitimate interest in the Disputed Domain Name.”).
The Panel finds that there is nothing in the record,
including the WHOIS registration information, which demonstrates that
Respondent is commonly known by the disputed domain name pursuant to Policy ¶
4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s
WHOIS information implies that Respondent is ‘commonly known by’ the disputed
domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not
apply); Gallup, Inc. v. Amish Country
Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the
respondent does not have rights in a domain name when the respondent is not
known by the mark).
The Panel finds that Complainant has established Policy ¶ 4(a)(ii).
Complainant avers in the Complaint that the website associated with the <myhershey.com> domain name does not have any commercial content. However, Panels have found that noncommercial content can evidence bad faith registration and use if Respondent is appropriating another’s mark. In this decision, in the absence of a Response, the Panel holds that Respondent’s appropriation of Complainant’s HERSHEY’S mark to display its apocalyptic message and the Ten Commandments is evidence of bad faith registration and use. See Ghose v. ICDSoft.com, D2003-0248 (WIPO May 22. 2003) (“[I]t does not matter that Respondent intends to operate a website which is entirely non-commercial. The bad faith lies in the deliberate and misleading use of another person’s trademark for the purpose of diverting Internet users looking for sites associated with the owner of that trademark, to Respondent’s website.”) Fox News Network, LLC v. Solomon, D2005-0022 (WIPO Mar. 25, 2005) (“The Panel finds that Respondent deliberately chose and commenced using the Disputed Domain Name with a view to diverting Internet users looking to locate information about Hannity, Colmes, and/or the Program to the Islamic Site that he linked to the Disputed Domain Name. Complainant has argued that such conduct constitutes bad faith, and the Panel agrees.”)
This finding above is further buttressed by the fame of
Complainant’s HERSHEY’S mark. The Panel
finds that Respondent’s appropriation of the hundred year-old mark further
suggests that Respondent intended to take advantage of Complainant’s goodwill
to its advantage. The Panel finds that
Complainant’s fame further suggests that Respondent registered and used the <myhershey.com>
domain name in bad faith. See Exxon Mobil Corp. v. Fisher, D2000-1412
(WIPO Dec. 18, 2000) (finding that the respondent had actual and constructive
knowledge of the complainant’s EXXON mark given the worldwide prominence of the
mark and thus the respondent registered the domain name in bad faith); Victoria's Secret v. Hardin, FA 96694
(Nat Arb. Forum Mar. 31, 2001) (finding that “[i]n light of the notoriety of
Complainant’s famous marks, Respondent had actual or constructive knowledge of
the BODY BY VICTORIA marks at the time [Respondent] registered the disputed
domain name” and such knowledge constituted bad faith).
The Panel finds that Complainant has established Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <myhershey.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq. , Panelist
Dated: January 20, 2006
National
Arbitration Forum