Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Mrs. Fields' Brand, Inc., Salt Lake City, UT, USA ("Complainant") represented by Richard Vangelisti, Stoel Rives LLP. The Respondent is Jewelry Affordable, Foutain Valley, CA, USA ("Respondent").

The domain name at issue is "mrsfieldscandy.com" registered with Network Solutions.

The Panelist certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as the panelist in this proceeding.

Hon. James A. Carmody, as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on October 12, 2000; The Forum received a hard copy of the Complaint on October 13, 2000.

On October 12, 2000 Network Solutions confirmed by e-mail to the Forum that the domain name "mrsfieldscandy.com" is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 4.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís UDRP.

On October 17, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 6, 2000 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 Respondentís registration as technical, administrative and billing contacts, and to postmaster@mrsfieldscandy.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.

On November 14, 2000, pursuant to Complainantís request to have the dispute decided by a One Member panel, the Forum appointed the Hon. James A. Carmody 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 Uniform 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 Forumís Supplemental Rules and any rules and principles of law that the panel deems applicable, without the benefit of any Response from the Respondent.

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

A. Complainant

Complainant alleges the following:

B. Respondent

Respondent did not file a response to the complaint. As the Respondent has failed to submit a response to the complaint, the Panel accepts as true all of the allegations of the complaint. See Talk City, Inc. v. Michael Robertson, D2000-0009 (WIPO Feb. 29, 2000).

Complainantís business was founded in 1977 in Palo Alto, California. It has grown to include over 650 retail outlets in the United States selling a comprehensive line of premium cookies, baked goods, candies, and treats. Complainant also operates over 65 international outlets located in 11 different countries.

Complainant owns many registered trademarks in the United States incorporating the words "Mrs. Fields" or "Mrs. Fields Cookies." These trademark registrations are for retail bakery store services, for bakery goods ñ namely cookies and brownies, and for ice cream. Complainant and its predecessor in interest, Mrs. Fields Development Corporation, also owns registered trademarks incorporating "Mrs. Fields" or "Mrs. Fields Cookies" in approximately 47 other countries. Complainant has promoted and continues to promote its "Mrs. Fields" marks through extensive advertising.

The Respondent registered the domain name in question on July 12, 1999. Registration of <mrsfieldscandy.com> domain name occurred long after Complainant first began using the "Mrs. Fields" marks, and well after Mrs. Fields obtained its first registrations for the mark.

Respondent is not a licensee of complainant and not authorized to use the "Mrs. Fields" mark in any manner whatsoever.

Complainant sent a letter, dated September 27, 1999, advising Respondent of the Complainantís marks. Respondent failed to respond to this correspondence from the Complainant. Complainant then sent another letter dated October 15, 1999. Respondent has also failed to respond to this second communication attempt.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("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.

The registered trademark is not identical with the disputed domain name because the domain name includes the descriptive word "candy." The Complainant has rights in its registered "Mrs. Fields" marks. A portion of the <mrsfieldscandy.com> domain name incorporates Complainantís registered "Mrs. Fields" marks. The Respondent has added the term "Candy" to the Complainantís mark. Because the Complainant markets a line of candies under its "Mrs. Fields" marks, the domain name in question causes confusion as to whether the domain name in question is connected to the Complainantís marks. Therefore, the Panel concludes that the domain name in question is confusingly similar with the Complainantís marks and Policy � 4.a.(i) is satisfied. See Caterpillar Inc. v. Matthew Quin, D2000-0314 (WIPO June 12, 2000) (finding that the disputed domain names of "caterpillarparts.com" and "caterpillarspares.com" were found to be confusingly similar to the registered trademarks of "Caterpillar" and "Caterpillar Design" because "the idea suggested by the disputed domain names and the trademarks was that the goods and services offered in association with the domain name are manufactured by or sold by the Complainant or one of the Complainants approved distributors. The disputed trademarks contain one distinct component, the word Caterpillar."); Brambles Industries Limited v. Geelong Car Company Pty. Ltd., trading as Geelong City Motors, D2000-1153 (WIPO Oct. 17, 2000) (finding that the domain name <bramblesequipment.com>

is confusingly similar because the combination of the two words "brambles" and "equipment" in the domain name implies that there is an association with the Complainantís business).

The Complainant contends that the Respondent is not a licensee of Complainant and not authorized to use the "Mrs. Fields" mark in any manner whatsoever. The domain name in dispute suggests some affiliation or connection of the Respondent with the Complainant when there is no such affiliation or connection. Based on the registration information of the domain name, the Panel concludes that the Respondent is commonly known by the name "Jewelry Affordable." Policy � 4.c.(ii). Therefore, the Panel determines that the Respondent is involved in jewelry sales and has no legitimate interests in a domain name that includes the Complainantís famous mark and the term "candy."

Further, the Respondent has not offered any evidence that it is using the domain name in connection with either a commercial or noncommercial use. Policy � 4.c.(i), (iii).

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name based on Policy � 4.a.(ii). See The Boeing Company v. Nicola Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where the Respondent has advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names and no use of the domain names has been proved).

Respondentís incorporation of the "Mrs. Fields" marks in its domain name can be for no other purpose but to attract customers searching for Mrs. Fieldsí website to Respondentís web site or future web site, or to sell the domain name. Such intent constitutes bad faith registration and use. Policy � 4.b. Further, the domain name in question is so obviously connected with the Complainant, that use by someone with no connection with the Complainant suggests bad faith. See Deutsche Bank AG v. Diego-Arturo Bruckner, D2000-0277 (WIPO May 30, 2000) ("[T]he domain name is so obviously connected with the Complainant and its services that its very use by someone with no connection with the Complainant suggests opportunistic bad faith). The Panel concludes that the elements of Policy � 4.a.(iii) have been satisfied.

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain name "mrsfieldscandy.com" be transferred from the Respondent to the Complainant.