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Cadbury Limited v. Asia Ventures, Inc. [2005] GENDND 1794 (11 October 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Cadbury Limited v. Asia Ventures, Inc.

Case No. D2005-0796

1. The Parties

The Complainant is Cadbury Limited, Bourneville, Birmingham, United Kingdom of Great Britain and Northern Ireland, represented by Willoughby & Partners, London, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Asia Ventures, Inc., Hong Kong, SAR of China.

2. The Domain Name and Registrar

The disputed domain name <cadburyworld.com> is registered with The Registry at Info Avenue d/b/a IA Registry.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 26, 2005. On July 27, 2005, the Center transmitted by email to The Registry at Info Avenue d/b/a IA Registry a request for registrar verification in connection with the domain name at issue. On August 3, 2005, The Registry at Info Avenue d/b/a IA Registry transmitted by email 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 August 10, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 30, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 15, 2005.

The Center appointed Luca Barbero as the sole panelist in this matter on September 22, 2005. 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 Complainant is member of the Cadbury Schweppes group of companies and is the owner of several trademark registrations including the United Kingdom registration nos. 354658 of August 15, 1988, for CARDBURY WORLD in class 16; 354660 of August 15, 1988, for CARDBURY WORLD in class 25; 359462 of September 30, 1988, for CARDBURY WORLD in class 6; 359463 of September 30, 1988 for CARDBURY WORLD in class 8; and 359464 of September 30, 1988, for CARDBURY WORLD in class 18.

The Respondent registered the domain name <cadburyworld.com> on December 25, 2001.

5. Parties’ Contentions

A. Complainant

The Complainant is one of the world’s leading chocolate confectioners - member of the Cadbury Schweppes group of companies. The business was launched by John Cadbury in Birmingham, England in 1824 where the Complainant still has its principal office and manufacturing base.

The Complainant highlights that also incorporated within the Cadbury site at Birmingham is Cadbury World, one of the United Kingdom’s leading tourists attractions, opened in 1990 and visited by 400,000 visitors in its first year. The Complainant’s budget at Cadbury World in Birmingham for the current year is £6,830,000, which is in line with the £6,610,000 turnover of the previous year. The Complainant informs that there is another Cadbury World in Dunedin, New Zealand, operated under licence by a sister company.

The Complainant emphasizes that the Respondent has no connection with the Complainant and is a notorious cybersqatter. The Panel is referred to the following WIPO decisions under the Policy, namely AstraZeneca AB v. Ventures, Inc. Asia, WIPO Case No. D2005-0264; Dell Inc. aka Dell Computer Corporation v. Asia Ventures, WIPO Case No. D2004-0452; The Sportsman’s Guide, Inc. v. Asia Ventures, Inc., WIPO Case No. D2002-1116; Six Continents Hotels, Inc. v. Asia Ventures, WIPO Case No. D2003-0659; and Pfizer Inc. v. Asia Ventures, Inc., WIPO Case No. D2005-0256. The Complainant indicates that it has no reason to believe that this case is in substance any different from the cited cases.

The Complainant’s representative has twice written to the Respondent seeking transfer of the domain name, attaching copies of the two letters to the Complaint but no reply has been received.

The Complainant contends that the disputed domain name is identical to the Complainant’s trademark, CADBURY WORLD providing the Panel with a schedule detailing the Complainant’s United Kingdom trademark registrations of the name, all of which date back to 1988.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name and the Complainant has no relationship of any kind with the Respondent; the Respondent is not known by the name Cadbury World nor, so far as the Complainant has been able to establish, has the Respondent any rights of any kind in respect of the name.

The Complainant emphasizes that the domain name is connected to a website which is essentially a general directory site although superficially having some relation to the Complainant and/or its Cadbury World sites and it is not a bona fide offering of goods or services because it depends for it success on Internet users being deceived.

The Complainant underlines that Internet users having access to the disputed domain name will be making the visit not to access a general directory site, but to visit a site of the Complainant dealing with one or other of the Complainant’s international renowned Cadbury World attractions.

With reference to the circumstances evidencing bad faith, the Complainant indicates that the Respondent registered the disputed domain name knowing the Complainant’s rights to Cadbury World as the website to which the domain name is connected makes reference to the Complainant and to chocolate. According to the Complainant, the references to Birmingham and Dunedin can only be there because the Respondent anticipates that Internet users visiting the site corresponding to the disputed domain name will be interested in advertisers’ services relating to those locations (e.g. hotels).

The Complainant contends that the Respondent deliberately selected the Complainant’s well-known trademark for the domain name with a view to using it to attract Internet users for commercial gain as the use of the Complainant’s trademark for the web address naturally serves as an attraction for those Internet users wishing to visit the Complainant’s site. The Complainant informs the Panel that the Complainant’s official web address for the United Kingdom Cadbury World is “www.cadburyworld.co.uk” and therefore visitors will assume that such a site is a site of or authorised by the Complainant.

In the view of the Complainant, commercial gain is to be derived from those unsuspecting visitors seeking to do business through the advertising links featured at the Respondent’s web site, as indeed, many visitors may not appreciate that the Respondent’s web site has no connection with the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions and is in default.

Therefore, the Panel shall decide this proceeding on the basis of Complainant’s submissions, drawing such inferences from the Respondent’s default as are considered appropriate according to paragraph 14(b) of the Rules.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and

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

6.1. Domain Name Identical or Confusingly Similar

The Complainant has provided evidence of ownership of a number of trademark registrations identical to the disputed domain name, such as United Kingdom registration nos. 354658 of August 15, 1988, for CARDBURY WORLD in class 16; 354660 of August 15, 1988, for CARDBURY WORLD in class 25; 359462 of September 30, 1988, for CARDBURY WORLD in class 6; 359463 of September 30,1988, for CARDBURY WORLD in class 8; and 359464 of September 30, 1988, for CARDBURY WORLD in class 18.

In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is identical to trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

6.2. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(a) that it has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute; or

(b) that it is commonly known by the domain name, even if it has not acquired any trademark rights; or

(c) that it intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

By not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.

There is no relation, disclosed to the Panel, between the Respondent and the Complainant and Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use Complainant’s trademarks and name under any circumstance.

The Panel therefore finds that Respondent has no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy.

6.3. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith:

(i) circumstances indicating that the holder 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 that Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder 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 holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’ 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 holder’s website or location or of a product or service on the holder’s website or location.

As to bad faith at the time of the registration, the Panel notes that the trademark CADBURY is well known and from the contents of the web site published by the Respondent of the disputed domain name, it can be inferred that Respondent was certainly also aware of the activities conducted by the Complainant at the CADBURY WOLRD site.

The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that actual knowledge of Complainant’s trademark at the time of the registration of the disputed domain name is to be considered an inference of bad faith (See Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).

Furthermore, since the Complainant’s trademark is well-known, the Panel shares the view of a number of panel findings of “opportunistic bad faith” in the registration of renowned or even somewhat less famous trademarks e.g. Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137; Prada S.A. v. Mark O'Flynn, WIPO Case No. D2001-0368; Ferrari S.p.A. v. Inter-Mediates Ltd., WIPO Case No. D2003-0050; and The Nasdaq Stock Market, Inc. v. Act One Internet Solutions WIPO Case No. D2003-0103.

As to the use and registration in bad faith, the Panel finds paragraph 4(b)(iv) of the Policy to be applicable in this case since the Respondent has attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s services.

The Panel finds paragraph 4(b)(ii) also applicable in this case since the Respondent has registered the domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name and has clearly engaged in a pattern of such conduct since it has also registered <dellrebatestatus.com>, <astrazenecapharm.com>, <sportmensguide.com>, <holidayinnsunspreeresort.com>, <universityofwyoming.com>, <pfizerinc.com> and other domain names that have been the subject of proceedings under the Policy.

In view of the above, the Panel finds that the Respondent has registered and used the domain name in bad faith, in accordance with paragraph 4(a)(iii) of the Policy.

7. Decision

In light of the foregoing, the Panel decides that (a) the domain name registered by the Respondent is identical to the Complainant’s trademarks; (b) the Respondent has no rights or legitimate interests in respect of the domain name; and (c) the domain name has been registered and used in bad faith.

Accordingly, the Panel requires that the registration of the domain name <cadburyworld.com> be transferred to the Complainant.

Luca Barbero
Sole Panelist

Date: October 11, 2005