DECISION

Mars, Incorporated v. Peter Carrington d/b/a Party Night, Inc.

Claim Number: FA0212000137043

PARTIES

Complainant is Mars, Incorporated, McLean, VA, USA (“Complainant”) represented by Victoria J.B. Doyle, of Fitzpatrick, Cella, Harper & Scinto.  Respondent is Peter Carrington d/b/a Party Night, Inc., Amsterdam, NL (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <skitles.com> and <marsbrightidea.com>, registered with Key-Systems GmbH.

PANEL

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.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 12, 2002; the Forum received a hard copy of the Complaint on December 16, 2002.

On December 13, 2002, Key-Systems GmbH confirmed by e-mail to the Forum that the domain names <skitles.com> and <marsbrightidea.com> are registered with Key-Systems GmbH and that Respondent is the current registrant of the names. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 19, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 8, 2003 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@skitles.com and postmaster@marsbrightidea.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 January 17, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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 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

1. Complainant makes the following assertions:

1. Respondent’s <skitles.com> and <marsbrightidea.com> domain names are confusingly similar to Complainant’s SKITTLES and RED & YELLOW’S BRIGHT IDEAS marks, respectively.

2. Respondent does not have any rights or legitimate interests in the <skitles.com> and <marsbrightidea.com> domain names.

3. Respondent registered and used the <skitles.com> and <marsbrightidea.com> domain names in bad faith.

2. Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Mars, Incorporated, is engaged in the manufacture, distribution, promotion and sale of confectionary products internationally. Among its many brands of confectionary products are SKITTLES, registered as a trademark on October 28, 1986 with the Principal Register of the United States Patent and Trademark Office (U.S. Reg. No. 1,415,102). In July of 1995 Complainant registered the <skittles.com> domain name to provide consumers information about SKITTLES brand candy.

Complainant registered the <marsbrightideas.com> domain name in October of 1999 as another online forum for promoting its products. The website, which has received millions of visitors since its inception, prominently displays Complainant’s RED & YELLOW’S BRIGHT IDEAS common law trademark. Complainant also uses its RED & YELLOW’S BRIGHT IDEAS trademark as the title of its electronic newsletter, which has almost a million subscribers both in the United States and internationally.

Respondent, Peter Carrington d/b/a Party Night, Inc., registered the <skitles.com> and <marsbrightidea.com> domain names on March 10, 2002 and April 16, 2002, respectively. Respondent uses the disputed domain names to redirect Internet users to a pornographic website at <hanky-panky-college.com>, which features both sexually explicit material and pop-up advertisements. Respondent has been brought before administrative Panels on at least six prior occasions, each time losing the disputed domain name.

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 and draw such inferences it considers appropriate pursuant to paragraph 14(b) 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 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.

Identical and/or Confusingly Similar

Complainant has established rights in the SKITTLES mark through registration with the United States Patent and Trademark Office, as well as through continuous and widespread use of the mark worldwide. Complainant has established rights in the RED & YELLOW’S BRIGHT IDEAS common law mark through widespread use and promotion of the mark on the Complainant’s website since 1999, thus creating sufficient secondary meaning associated with the mark to permit this claim under the UDRP. See British Broadcasting Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).

Respondent’s <skitles.com> domain name is confusingly similar to Complainant’s registered SKITTLES mark. Respondent has merely removed the letter “t” from Complainant’s mark, a misspelling that remains visually similar and phonetically identical to the mark. See Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is phonetically identical to Complainant’s mark satisfies ¶ 4(a)(i) of the Policy); see also State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to the Complainant’s STATE FARM mark).

Respondent’s <marsbrightidea.com> domain name is confusingly similar to Complainant’s common law RED & YELLOW’S BRIGHT IDEAS mark. It takes the pertinent BRIGHT IDEAS portion of Complainant’s mark and removes the letter “s.” This alteration of Complainant’s mark, standing alone, could arguably be found not to be confusingly similar under Policy 4(a)(i). However, Respondent’s addition of Complainant’s business name prior to the “bright idea” portion of the domain name makes it clear that Respondent’s intent was to create a likelihood of confusion between its domian name and Complainant’s mark, and the Panel finds that this domain name is confusingly similar under Policy ¶ 4(a)(i). See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the Complainant’s “Asprey & Garrard” and “Miss Asprey” marks); see also Maple Leaf Sports & Entertainment Ltd. v. Toronto Maple Leafs!, D2000-1510 (Jan. 24, 2001) (finding that the domain name <leafs.com> is confusingly similar to Complainant’s marks, where Complainant holds many trademarks that contain the term “LEAFS”).

Accordingly, the Panel finds that the <skitles.com> and <marsbrightidea.com> domain names are confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

The Panel views Respondent’s failure to respond to the Complaint as evidence that it lacks rights and legitimate interests in the <skitles.com> and <marsbrightidea.com> domain names under Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”).

If Complainant proves that Respondent does not qualify under any of the circumstances evidencing rights or legitimate interests in a domain name as stated in Policy ¶ 4(c)(i)-(iii), Complainant meets its burden under Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where Complainant has asserted that Respondent has no rights or legitimate interests in respect of the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).

In this dispute, Respondent uses both infringing domain names to redirect Internet users to a pornographic website, presumably in exchange for a referral fee or some other form of compensation. Such activity tarnishes Complainant’s marks, and is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(iii). See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well-known mark to provide a link to a pornographic site is not a legitimate or fair use); see also MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material where such use is calculated to mislead consumers and to tarnish the Complainant’s mark).

Respondent, known as either Peter Carrington or Party Night, Inc., registered two domain names that blatantly infringe on Complainant’s marks. As such, Policy ¶ 4(c)(ii) is also inapplicable to Respondent. See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <skitles.com> and <marsbrightidea.com> domain names under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent registered and used the <skitles.com> and <marsbrightidea.com> domain names in bad faith. These two domain names, both of which infringe on Complainant’s marks, redirect unsuspecting Internet users to websites featuring sexually explicit material and advertisements, presumably for commercial gain. Such activity equates to bad faith use and registration of the domain names per Policy ¶ 4(b)(iv). See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (use of another's well-known mark to provide a link to a pornographic site is evidence of bad faith registration and use); see also Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where Respondent attracted users to his website for commercial gain and linked his website to pornographic websites); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding bad faith where the Respondent linked the domain name in question to websites displaying banner advertisements and pornographic material).

The Panel thus finds that Respondent registered and used the <skitles.com> and <marsbrightidea.com> domain names in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

Having established all three elements under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.

Accordingly, it is Ordered that the <skitles.com> and <marsbrightidea.com> domain names be TRANSFERRED from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated: January 21, 2003

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