MGW Group, Inc. v. Runited

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

MGW Group, Inc. v. Runited

Case No. D2003-0379

1. The Parties

The Complainant is MGW Group, Inc. of Plano, Texas, United States of America, represented by Baker Botts, LLP of United States of America.

The Respondent is Runited of St. Petersburg, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <cookiesbydesigns.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 16, 2003. On May 19, 2003, the Center transmitted by e-mail to eNom a request for registrar verification in connection with the domain name at issue. On May 27, 2003, eNom transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that 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 May 28, 2003.

In accordance with the Rules, paragraph 5(a), the due date for Response was

June 17, 2003. The Respondent did not submit any response. Accordingly,

the Center notified the Respondent’s default on June 18, 2003.

The Center appointed Dr. de Cock Buning as the sole panelist in this matter

on July 2, 2003. 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,

paragraph 7.

4. Factual Background

The following information is derived from the Complaint and supporting evidence

submitted by the Complainant.

MGW is the franchiser for the COOKIES BY DESIGN franchise shops that produce

and sell several kinds of decorated cookies. MGW started using its COOKIES BY DESIGN

mark in 1991. Presently, MGW has over 187 shops throughout the United States,

which advertise and sell cookie products, inter alia, under the COOKIES BY

DESIGN mark and logos featuring the mark COOKIES BY DESIGN. MGW also

sells its products over the Internet at "www.cookiebouquet.com" and

"www.cookiesbydesign.com". Gross sales for the year 2002, were approximately

$57,000,000.

MGW and its franchisees spend approximately $1,750,000 to $2,000,000 per year

on advertising, marketing and public relations. MGW's franchise system has won

several awards in the United States. As a result of extensive advertising and

promotion by MGW, the COOKIES BY DESIGN mark is well-known among consumers and

in the retail cookie business.

MGW has used the trademark COOKIES BY DESIGN in commerce throughout the United States

since December 1991. MGW owns, inter alia, the following registrations incorporating

the COOKIES BY DESIGN trademark:

- COOKIES BY DESIGN, Reg. No. 1,728,507, filed December 7, 1990,

and registered on October 27, 1992, for 'retail store services in

the field of cookies,' in International Class 42.

- COOKIES BY DESIGN, Reg. No. 1,892,289, filed January 10, 1994,

and registered on May 2, 1995, for 'cookies,' in International Class

30.

- COOKIES BY DESIGN THE ORIGINAL COOKIE BOUQUET "THE SWEETEST BOUQUET IN TOWN"

ESTABLISHED 1983, and Design, Reg. No. 2,072,927, filed January 24, 1994,

and registered on June 24, 1997, for 'retail store and mail order

services in the field of cookies,' in International Class 42.

- COOKIES BY DESIGN THE ORIGINAL COOKIE BOUQUET "THE SWEETEST BOUQUET IN TOWN"

ESTABLISHED 1983, and Design, Reg. No. 2,072,928, filed January 24, 1994,

and registered on June 24, 1997, for 'cookies,' in International Class

30.

The Respondent has not answered the Complainant’s factual assertions or evidence.

However, by e-mail of May 28, 2003, Respondent has indicated that

it wishes to voluntarly transfer the domain name.

After receipt of this e-mail Complainant inquired by e-mail on June 5, 2003,

whether the Center could arrange such transfer while avoiding the release of

the lock on the domain name.

The Center replied to Complainant by e-mail of June 6, 2003, that

it cannot arrange for the transfer of the domain name, but can suspend the proceedings

for a period of 30 days upon receipt of a request for suspension. Upon receipt

of the Notification of Suspension, the Registrar will unlock the domain name

registration solely for the purpose of allowing the respondent to transfer the

domain name to the Complainant. The Center further confirmed that if a transfer

does not take place within the 30 day period, the suspension can be renewed,

or the proceeding will continue upon request of complainant.

Complainant replied by e-mail of June 6, 2003, that since that is

foresees difficulties in assuring the transfer of the domain name to Complainant

rather than to someone else. Complainant would prefer the procedure to continue

and to acquire a decision in this matter.

5. Parties’ Contentions

A. Complainant

The Complainant contends as follows:

(i) The domain name <cookiesbydesigns.com > incorporates the COOKIES

BY DESIGN trademark and is virtually identical to the COOKIES BY DESIGN trademarks.

Complainant's use of the trademarks long predates any use or registration of

the domain name.

(ii) Respondent is not making a legitimate non-commercial or fair use of the

domain name. The web site is a commercial site. Respondent is not a licensee

of Complainant and is not known by the name COOKIES BY DESIGN. There

is no evidence of Respondent's use of, or demonstrable preparations to use,

the domain name in connection with a bona fide offering of goods or services.

(ii) The domain name has been registered and used in bad faith. Internet users

who mistype Complainant's COOKIES BY DESIGN mark are instantly transferred to

Respondent's web site. Respondent chose the domain name <cookiesbydesigns.com>

to "free-ride" on the goodwill associated with the COOKIES BY DESIGN trademark

by creating a likelihood of confusion and divert Internet users to its web site

where it provides pornographic services.

Respondent's use of the domain name in conjunction with pornographic and sexually

explicit images tarnishes and dilutes Complainant's COOKIES BY DESIGN

trademark by giving consumers the impression that Complainant endorses, sponsors,

or is otherwise affiliated with Respondent's web site and the pornographic content

thereof.

B. Respondent

The Respondent did not formally reply to the Complainant’s contentions.

However as indicated above, by e-mail of May 28, 2003, Respondent

has indicated that it wishes to transfer the domain name because Respondent,

as it states in its e-mail, is "not interested in the domain name"

and that "<cookiesbydesigns.com> was directed to the wrong page."

6. Discussion and Findings

The Respondent was given notice of this proceeding in accordance with the Rules.

The Center discharged its responsibility under Rules paragraph 2(a) to employ

reasonably available means calculated to achieve actual notice to the Respondent

of the Complaint. The aforementioned e-mail sent by Respondent to the Complainant

and the Center on May 28, 2003, is a clear indication that the Respondent

actually received the Complaint.

However, as previously indicated, the Respondent did not file a formal reply

to the Complaint and has not sought to answer the Complainant’s assertions,

evidence or contentions in any other manner. The Panel finds that the Respondent

has been given a fair opportunity to present its case, and the Panel will proceed

to a decision on the Complaint.

The Respondent’s default does not automatically result in a decision in favour

of the Complainant. The Complainant must still prove the elements required by

Policy paragraph 4(a). In accordance with Paragraph 4(a) of the Policy, in order

to succeed in this proceeding and obtain the transfer of the domain name, the

Complainant must prove that each of the three following elements are satisfied:

1. The domain name is identical or confusingly similar to a trademark or service

mark in which the Complainant has rights (see below, section 6.A);

2. The Respondent has no rights or legitimate interests in respect of the domain

name (see below, section 6.B); and

3. The domain name has been registered and is being used in bad faith (see

below, section 6.C).

Pursuant to Paragraph 15(a) of the Rules, the Panel shall decide the Complaint

on the basis of the statements and documents submitted and in accordance with

the Policy, the Rules and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

The Complainant is the owner of the COOKIES BY DESIGN trademark used for franchise

shops, that produce and sell several kinds of decorated cookies. Complainant

started using its COOKIES BY DESIGN mark in 1991, and has many shops throughout

the United States and sells its products over the Internet at, inter alia, www.cookiesbydesign.com.

As a result of extensive advertising and promotion, the COOKIES BY DESIGN mark

is a well-known trademark.

The Respondent has not contested the Complainant’s assertions.

In the circumstances, the Panel finds that the Complainant has rights in the

COOKIES BY DESIGN trademark.

The Policy requires that the disputed domain name be "identical or confusingly

similar" to the Complainant’s COOKIES BY DESIGN trademark.

The Respondent incorporates the Complainants’ entire COOKIES BY DESIGN mark

in the disputed domain name <cookiesbydesigns.com> with the mere addition

of "s", thus introducing a small typographical change, from Complainant’s

COOKIES BY DESIGN mark.

In the circumstances, the Panel finds that the disputed domain name is confusingly

similar to the Complainant’s COOKIES BY DESIGN trademark. Accordingly, the Panel

finds that the Complainant has satisfied the first element required by the Policy.

B. Rights or Legitimate Interests

Even though the Respondent has not contested the Complainant’s assertions,

it is upon the Panel to consider whether the Respondent’s use of the disputed

domain name demonstrates rights or legitimate interests in the domain name.

According to Policy paragraph 4(c), the following circumstances, if proved,

demonstrate a registrant’s rights or legitimate interests in a domain name:

(i) the registrant used or demonstrably prepared to use the domain name or

a corresponding name in connection with a bona fide offering of goods or services

prior to notice of the dispute;

(ii) the registrant (as an individual, business, or other organization) has

been commonly known by the domain name, even if it has not acquired trademark

rights; or

(iii) the registrant is making a legitimate non-commercial or fair use of the

domain name, without intent for commercial gain to misleadingly divert consumers

or to tarnish the complainant’s mark.

To satisfy the requirements of Policy paragraph 4(c)(i), the Respondent’s use

of the disputed domain name must be in connection with a "bona fide" offering

of goods or services. In the circumstances of this case, the Respondent’s use

of the disputed domain name is not "bona fide" within the meaning of Policy

paragraph 4(c)(i) because:

(1) there is no apparent legitimate justification for the Respondent’s registration

and use of the disputed domain name <cookiesbydesigns.com> that is confusingly

similar to the Complainant’s trademark and its <cookiesbydesign.com> domain

name for its web site;

(2) Respondent's interest in the domain name appears to be in its value as

a typographical error of Complainant’s web site.

Policy paragraph 4(c)(ii) is not applicable. The Respondent does not contend,

and there is no evidence that, the Respondent has been commonly known by the

disputed domain name or that the disputed domain name is derived from one of

Respondent’s trademarks or trade names.

Policy paragraph 4(c)(iii) is not applicable. According to the uncontested

statement of the Complainant, the Respondent is, or at least was using the domain

name for an instant transfer to Respondent's commercial pornographic web site

that generates profit from users who pay to view pornographic images and/or

from banner advertisements.

For these reasons, the Panel finds that the Respondent has no rights or legitimate

interests in the disputed domain name.

C. Registered and Used in Bad Faith

Policy paragraph 4(a)(iii) requires the Complainant to prove that the Respondent

registered and has used the disputed domain name in bad faith. The language

of Policy paragraph 4(a)(iii) requires that both bad faith registration and

bad faith use be proved.

Policy paragraph 4(b) provides that the following circumstances are deemed

to be evidence that a registrant has registered and used a domain name in bad

faith:

(i) circumstances indicating that the registrant has registered or has acquired

the domain name primarily for the purpose of selling, renting, or otherwise

transferring the domain name registration to the complainant who is the owner

of the trademark or service mark or to a competitor of the complainant, for

valuable consideration in excess of its documented out-of-pocket costs directly

related to the domain name; or

(ii) the registrant has registered the domain name in order to prevent the

owner of the trademark or service mark from reflecting the mark in a corresponding

domain name, provided that the registrant has engaged in a pattern of such conduct;

or

(iii) the registrant has registered the domain name primarily for the purpose

of disrupting the business of a competitor; or

(iv) by using the domain name, the registrant has intentionally attempted to

attract, for commercial gain, Internet users to its 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 its web site or

location or of a product or service on its web site or location.

The Complainant does not rely on Policy paragraphs 4(b)(i), 4(b)(ii) or 4(b)(iii)

but relies upon Policy paragraph 4(b)(iv), which requires the Complainant to

establish that the Respondent registered and is using the disputed domain name

in order to confuse and divert Internet traffic to its web site for commercial

gain.

The Panel finds that the Respondent apparently knew of the Complainant’s COOKIES BY

DESIGN trademark and registered and is using the disputed domain name in order

to confuse and divert Internet traffic to the Respondent’s web site, based upon

the following circumstances:

(1) the Complainant’s COOKIES BY DESIGN trademark is well-known;

(2) there is no apparent connection or relationship between the disputed domain

name and the Respondent or its web site;

(3) there is no other apparent legitimate justification for the Respondent’s

registration and use of the disputed domain name for its web site;

(4) the Respondent has not denied any knowledge of the Complainant or its trademark;

and

(5) the disputed domain name is a confusingly similar misspelling of the Complainant’s

<cookiesbydesign.com> domain name.

In addition, the Panel draws an adverse inference from the Respondent’s failure

to provide any explanation or rationale for its use of the disputed domain

name for its web site.

The Panel also finds that the Respondent’s web site results in commercial gain

to the Respondent since Respondent uses, or at least was using, the domain name

for an instant transfer to Respondent's commercial pornographic web site that

generates profit from users who pay to view pornographic images and/or from

banner advertisements. In the absence of any reply by the Respondent, the Panel

finds that the Respondent’s web site generates, or at least was generating,

revenue for the Respondent in that manner.

The Respondent’s registration and use of the disputed domain name is a form

of bad faith domain name registration and use known as "typosquatting" – the

registration of domain names that are identical to popular web site domain names

except for slight differences that may occur as a result of common keyboarding

or spelling errors in order to misdirect Internet users.

Accordingly, the Panel finds that the Complainant has established that the

Respondent registered and is using the disputed domain name in bad faith pursuant

to Policy paragraph 4(b)(iv).

7. Decision

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 name, <cookiesbydesigns.com>

be transferred to the Complainant.

Madeleine De Cock Buning

Sole Panelist

Dated: July 14, 2003