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Columbia Insurance Company v. Pampered Gourmet [2004] GENDND 1346 (18 October 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Columbia Insurance Company v. Pampered Gourmet

Case No. D2004-0649

1. The Parties

Complainant is Columbia Insurance Company, a Nebraska corporation with a place of business in Omaha, Nebraska, United States of America, which is represented by Brinks, Hofer, Gilson & Lione of Chicago, Illinois, United States of America.

Respondent is Pampered Gourmet, an entity with an address in Grants Pass, Oregon, United States of America.

2. The Domain Name and Registrar

The disputed domain name <pamperedgourmet.com> is registered with Tucows, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on August 17, 2004. On August 19, 2004, the Center transmitted by email to Tucows a request for registrar verification in connection with the disputed domain name. On August 19, 2004, Tucows transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant for the domain name, indicating that it had “locked” the domain name, confirming several details of its registration agreement, and providing the Center with contact information for the administrative and technical contacts.

In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on August 26, 2004. The Center verified that the Complaint and the amendment satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”).

In accordance with Rules 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 27, 2004. In accordance with Rule 5(a), the Response was due on September 16, 2004.

No response was received from Respondent by the September 16, 2004 deadline. On September 21, 2004, the Center transmitted to Respondent, via e-mail, a Notification of Respondent Default.

The Center appointed Debra J. Stanek as the sole panelist in this matter on October 5, 2004. The Panel finds that the Panel 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 Rule 7.

4. Factual Background

Complainant owns several United States federal trademark registrations for the mark THE PAMPERED CHEF, the earliest of which issued in 1990, for “household and kitchen utensils.” The other registrations, for the word mark and for the words in a stylized type, cover related services and products. According to Complainant, the mark THE PAMPERED CHEF has been in use in connection with the goods and services since at least 1980, and has been extensively advertised and promoted, including on television, in catalogs and newspapers, on the Internet, and at trade shows.

According to Complainant, Respondent registered the domain name <pamperedgourmet.com> in February 2002. The “www.pamperedgourmet.com” web site offers kitchen utensils, household products, and related goods and services.

5. Parties’ Contentions

A. Complainant

Complainant makes the following contentions:

The disputed domain name, <pamperedgourmet.com>, is confusingly similar to Complainant’s THE PAMPERED CHEF trademark. Complainant points to Respondent’s use of the primary and dominant portion of its mark -- the term “pampered” -- while deleting the article “the” and replacing the term “chef” with the highly-related term “gourmet.”

Complainant also points to the facts that: (1) its THE PAMPERED CHEF marks are inherently distinctive as applied to kitchen utensils and household products, (2) THE PAMPERED CHEF marks have been in use for more than 20 years, and (3) the parties directly compete in the sale of kitchen utensils, household products, and related goods and services.

Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant once again points to its long use of THE PAMPERED CHEF mark and states that it has not authorized Respondent’s use. Complainant contends that Respondent does not own a trademark registration “for any mark comprising, in whole or in part, the PAMPERED GOURMET mark.” However, Complainant does indicate that in February 2002, Respondent applied to federally register PAMPERED GOURMET (in a stylized type), based on Respondent’s use of the mark. That application was subsequently abandoned.

Finally, Complainant contends that Respondent’s use of the <pamperedgourmet.com> domain name is neither a legitimate non-commercial use nor a fair use. Complainant points to the fact that visitors to Respondent’s web site are likely to be confused as to the source, sponsorship, or affiliation of the site.

Complainant next contends that Respondent has registered and is using the disputed domain name in bad faith because: (1) In response to Complainant’s demand letters, Respondent has not indicated that it will cease use of the term “pampered”; (2) Respondent had actual or constructive notice of Complainant’s trademark rights; and (3) Respondent must have had actual notice of Complainant’s mark and, therefore, must have intended to divert visitors to Respondent’s web site for commercial gain.

B. Respondent

As noted above, Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

In order to prevail, Complainant must prove:

(i) The <pamperedgourmet.com> domain name is identical or confusingly similar to Complainant’s THE PAMPERED CHEF mark; and

(ii) Respondent has no rights or legitimate interests in respect of the <pamperedgourmet.com> domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Policy, Paragraph 4(a). The Policy sets out four sets of circumstances that may evidence a Respondent’s bad faith registration and use under Paragraph 4(a)(iii), see Policy, Paragraph 4(b), as well as examples of circumstances that may evidence a Respondent’s rights or legitimate interests in a domain name, see Policy, Paragraph 4(c).

Although Respondent has not answered the Complaint, a default does not automatically result in a finding for Complainant. Rather, Complainant continues to have the burden of establishing the required elements. The Panel may, however, draw such inferences from Respondent’s default as it considers appropriate. See Rules, Paragraph 14(b).

The primary consequence of Respondent’s failure to respond is that it has not responded to Complainant’s arguments regarding confusing similarity or offered any of the types of evidence set forth in Paragraph 4(c) of the Policy, such as using (or preparing to use) the domain name before the dispute, being known by the domain name, or making legitimate noncommercial or fair use of the domain name, that might support a finding that Respondent has rights or legitimate interests in the domain name. Nor has Respondent provided any evidence on the issue of bad faith.

A. Identical or Confusingly Similar

Complainant has established its rights in the mark THE PAMPERED CHEF by providing proof of its federal trademark registrations and the testimony contained in the declaration of Catherine R. Landman, its Senior Vice President and General Counsel¹.

Complainant must also establish that the disputed domain name is identical or confusingly similar to its mark. Complainant does not argue that the <pamperedgourmet.com> domain name is identical to its THE PAMPERED CHEF mark. Complainant must, therefore, establish that the domain name is “confusingly similar” to its mark.

As an initial matter, the Panel notes that Rule 15 requires it to decide a complaint based upon the Policy, Rules, and “any rules and principles of law that it deems applicable.” Here, neither the Policy nor the Rules expressly articulate a test for determining “confusing similarity” and other panels have handled this issue differently. Some have limited the test to determining the degree of resemblance of the domain name and mark at issue as to appearance, sound, and meaning. Others, including in the case cited by Complainant, have in addition considered factors such as the distinctiveness of the mark, how well-known the mark is, how long the mark has been used, and the nature of the goods and services with which the mark is used.

This Panel concludes that the language of Paragraph 4 of the Policy supports the view that confusing similarity should be determined only by the degree of resemblance. This is because Paragraph 4(a) refers only to the identity or confusing similarity of the domain name and mark. In contrast, Paragraph 4(b)(iv) does expressly refer to “likelihood of confusion . . . as to the source, sponsorship, affiliation, or endorsement.” The Panel also finds persuasive the fact that the Policy is intended to be international in scope, which suggests that -- absent express language -- a panel should be cautious about interpreting the Policy as incorporating a test that may not exist in a number of jurisdictions. See Bradford & Bingley Plc v. Registrant info@fashionID.com 987654321, WIPO Case No. D2002-0499 (August 16, 2002).

Whether or not the disputed domain name is confusingly similar to Complainant’s mark presents a close question. While deletion of the article “the” does not result in a significant difference, substitution of the term “gourmet” for the term “chef” does result in some difference in appearance, pronunciation, and meaning.

Here the disputed domain name does not incorporate the entirety of Complainant’s mark, but only a single term -- “pampered.” Complainant argues that the term “pampered” is the dominant portion of its mark and that the terms “gourmet” and “chef” are highly related, pointing to their juxtaposition in the phrase “gourmet chef.” In this Panel’s view, while the terms are related, they are not synonymous.

Accordingly, Respondent might have been able to advance compelling arguments that the Complainant’s trademark rights are limited to the combination of “pampered” and “chef” and do not extend to an individual constituent part. Respondent might also have argued that the differences in meaning, combined with the differences in appearance and pronunciation, result in a domain name that is dissimilar to Complainant’s mark.

By virtue of its default, Respondent has not advanced any argument. The Panel has no factual basis to reach other conclusions regarding the importance of the term “pampered” or the degree of connection between “chef” and “gourmet.”

Under the circumstances of this case, the Panel finds that Complainant has met its burden of establishing that Respondent’s domain name is confusingly similar to Complainant’s trademark.²

B. Respondent Has No Rights or Legitimate Interests in the Domain Name

Establishing that Respondent has no rights or legitimate interests in a domain name - proving a negative - can be difficult. Some panels have held that the burden of establishing this element is light, because the evidence lies within a respondent’s knowledge. Others have held that after a complainant makes a prima facie showing, the burden shifts to the respondent to rebut complainant’s evidence. These approaches are consistent with the general structure of the Rules. Rule 3(b)(ix)(2) requires a complainant to show why the respondent “should be considered” as having no rights or interests in the domain name (not why the respondent has no rights or interests in the name), while Rule 5(b) requires the respondent to “[r]espond specifically to the statements and allegations” of the complaint (emphasis added).

The Panel concludes that Complainant has adequately made a prima facie showing that none of the three examples set forth in Paragraph 4(c) of the Policy are applicable here.

First, it does not appear that Respondent was making a bona fide use of the domain name before notice of the dispute. As noted above, the disputed domain name is confusingly similar to Complainant’s mark, which is well known and has been used for many years. According to Complainant, visitors to the “www.pamperedgourmet.com” site are presented with products and services that compete with those offered by Complainant. Such a use is not bona fide.

Second, although Complainant does not provide evidence of trademark searches or other investigations³, it does not appear that the disputed domain name is Respondent’s legal name or is used to identify Respondent. The PAMPERED GOURMET trademark application identified The Paul W. Krueger and Jolene C. Krueger Joint Venture, comprised of the two named individuals, as applicant, and trademark counsel confirmed that he represented them (rather than an entity called “Pampered Gourmet”). Accordingly, the Panel believes that Complainant has met its burden under Rule 3(b)(ix)(2).

Third, it does not appear that Respondent is making a legitimate non-commercial or fair use of the domain name. The printout of the home page of Respondent’s “www.pamperedgourmet.com” web site shows that visitors are offered competing products.

These circumstances, combined with the adverse inferences drawn by Respondent’s failure to respond to the Complaint, are sufficient to meet Complainant’s burden.

The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

C. Respondent Has Registered and Used the Domain Name in Bad Faith

Complainant has established that Respondent has registered and used the domain name in bad faith by showing that Respondent uses the domain name to intentionally try to attract, for commercial gain, visitors to Respondent’s site, by creating a likelihood of confusion with Complainant’s THE PAMPERED CHEF mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s site or the goods and services on Respondent’s site. See Policy, paragraph 4(b)(iv).

As noted above, Respondent’s domain name is confusingly similar to the THE PAMPERED CHEF mark. It is therefore reasonable to conclude that Respondent’s site attracts visitors who are actually seeking Complainant’s site. Those visitors are then offered products that, according to Complainant, compete with those offered by Complainant. It is reasonable to assume that Respondent realizes a commercial gain from these activities.

Moreover, it is relevant that Complainant’s registered mark has been in use for many years and is well known in connection with kitchen and household products. It is not unreasonable to impute to Respondent knowledge of Complainant’s rights in registering and using the domain name.

Further, the Panel has already concluded that Respondent has no rights or legitimate interests in the domain name and that Respondent’s site does not make a bona fide offering of goods or services.

Under these circumstances, the Panel finds that Respondent has registered and used the domain name in bad faith.

7. Decision

For the foregoing reasons, in accordance with Paragraph 4(i) of the Policy and Rule 15, the Panel orders that the domain name <pamperedgourmet.com> be transferred to Complainant.

Debra J. Stanek
Sole Panelist

Dated: October 18, 2004

¹ In her declaration, Ms. Landman attests that she is familiar with the sales and marketing of Complainant’s products.

² The Panel would reach the same result under a more expansive test of “confusing similarity” as advanced by Complainant. Due to Respondent’s default, the Panel would have no factual basis for coming to any other conclusion regarding the distinctiveness of the mark, how well-known it is, how long it has been used, and the nature of the goods and services with which it is used, or any other factors.

³ These might have included results of searches of: (a) federal and state trademark databases for “pampered” marks owned by Respondent, (b) telephone listings for Grants Pass, Oregon and the surrounding area, or (c) databases of Oregon corporations. Nonetheless, Complainant has clearly established long-time and extensive use of its mark, making it difficult to conceive of circumstances in which Respondent might have legitimately used or become known by the domain name.