WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Columbia Insurance Company v. Fred Sacco
Case No. D2006-1618
1. The Parties
The Complainant is Columbia Insurance Company, of Omaha, Nebraska, United States of America, represented by Brinks Hofer Gilson & Lione, United States of America.
The Respondent is Fred Sacco, of Papillion, Nebraska, United States of America.
2. The Domain Names and Registrar
The disputed domain names <pamperedchef.mobi> and <thepamperedchef.mobi> are registered with Go Daddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December20,2006. On December21,2006, the Center transmitted by email to Go Daddy.com, Inc a request for registrar verification in connection with the domain names at issue. On December22,2007, Go Daddy.com, Inc transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on January15,2007. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January19,2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February8,2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February9,2007. Thereupon the Respondent replied via email on February10,2007. The Center informed the Respondent on February14,2007, that the term for answering the Complaint had already expired and that it would be up to the Panel to decide whether to consider any Response (if submitted later) in deciding the case.
The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on March7,2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph7.
4. Factual Background
The following facts are derived from the Complaint and its annexed documents. The Respondent has not contested any of these facts.
Since at least 1980, Complainant, through its predecessor-in-interest and now licensee, The Pampered Chef Ltd., has continuously used the mark THE PAMPERED CHEF in connection with kitchen utensils, household products and related goods and services. Complainant’s licensee has spent millions of dollars promoting and advertising the mark THE PAMPERED CHEF in numerous countries.
Complainant, through its predecessor-in-interest and licensee The Pampered Chef Ltd., is the owner of several valid and subsisting trademark registrations in the United States of America, Canada, the European Community (CTM), Germany and the United Kingdom for the mark THE PAMPERED CHEF for use in connection with various kitchen utensils, household products and related goods and services. Copies of the trademark registrations were attached to the Complaint.
Complainant and its predecessor-in-interest and licensee also own numerous domain names incorporating the designation “Pampered Chef”. Copies of the whois records were attached to the Complaint.
Respondent registered the disputed domain names in October2006 and offered them for sale on the domain name selling platform Sedo. Respondent also used the domain names to redirect Internet users to websites offering products directly competitive to those of the Complainant. On November1,2006, Respondent offered to sell the domain names to Complainant for “a few thousand dollars.”
5. Parties’ Contentions
Complainant contends that the domain names are legally identical to Complainant’s THE PAMPERED CHEF marks in terms of sound, impression, appearance and meaning and therefore infringe Complainant’s registered trademark rights. Complainant also contends that Respondent uses the domain names to redirect Internet users to commercial websites featuring links to third parties’ websites offering products directly competitive with those offered by Complainant under the mark THE PAMPERED CHEF. Respondent has also offered the domain names for sale. Complainant has never authorized Respondent to use Complainant’s trademarks. Complainant contends that Respondent lacks any legitimate right or interest in the domain names, and has registered and used the domain names in bad faith.
Respondent did not reply to the Complainant’s contentions within the response period set forth by the Rules.
In its late-filed response the Respondent contends that the domain names in dispute have no affiliation with Complainant’s trademarks.
Respondent did not submit any evidence or further argument to support his contentions.
6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in Paragraph 4 (a) of the Policy have been satisfied:
(i) the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and 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.”
A. Identical or Confusingly Similar
The disputed domain names are <thepamperedchef.mobi> and <pamperedchef.mobi>. The elimination of the spaces between the words and the addition of the definite article “the” do not alleviate the virtual identity of the domain names with Complainant’s trademarks.
Accordingly, the Panel finds that the domain names are identical and confusingly similar to Complainant’s trademarks.
B. Rights or Legitimate Interests
Respondent is neither an authorized licensee of the Complainant, nor is he authorized to use Complainant’s THE PAMPERED CHEF trademarks. The only interest of Respondent in the domain names appears to be their value in being associated with Complainant’s THE PAMPERED CHEF trademarks and domain names.
There is no evidence that Respondent has developed any trademark rights in the mark THE PAMPERED CHEF or that Respondent is commonly known by the designations “pamperedchef” or “thepamperedchef.”
Thus, the Panel finds that Respondent has no rights or legitimate interests with regard to the domain names at issue.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, there are four non-exclusive circumstances that, if found to be present, are deemed to provide evidence of bad faith in registering and using a domain name. These factors include, among others:
(1) circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the owner of the trademark or service mark or to a competitor of the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name; and
(2) whether by using the domain name Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or location of a product or service on the Respondent’s website or location.
Here, the evidence indicates that Respondent registered the domain names 26 years after Complainant’s predecessor-in-interest began using the mark THE PAMPERED CHEF. In view of Complainant’s extensive use of the mark, numerous trademark registrations and domain names, Respondent cannot reasonably argue that he was not aware of Complainant’s trademark rights when registering the domain names. In addition, Respondent is attempting to sell the domain names through the domain selling platform Sedo and has also offered to sell the domain name <pamperedchef.mobi> directly to Complainant “for a few thousand dollars,” a demand clearly exceeding Respondent’s out-of-pocket costs directly related to that domain name.
Furthermore, Respondent uses the disputed domain names for commercial gain by directing Internet users to third parties’ websites offering products directly competitive with those of the Complainant. By these acts, and for his own commercial gain, Respondent is deliberately diverting Internet users to Respondent’s website by trading off the goodwill established in Complainant’s THE PAMPERED CHEF trademarks.
Accordingly, the Panel finds that Respondent has registered and used the domain names in bad faith in accordance with paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <pamperedchef.mobi>, <thepamperedchef.mobi> be transferred to the Complainant.
Lynda J. Zadra-Symes