Domain name - Domain name dispute resolution policy - Trademark rights - U.S. service mark - Identical - Confusingly similar - Legitimate interest - Bad faith registration - Bad faith use - Valuable consideration in excess of out of pocket costs - Respondent’s pattern of conduct.

Complainant owns and uses the U.S. trademark CHERRYDALE FARMS in connection with candies, cookies, fruits, and honey.  The mark has been used in commerce since 1943.  Complainant also owns the domain name, cherrydale.com.  Respondent registered the domain names, Cherrydalefarms.com and Cherrydale-farms.com.  Respondent has not utilized the domain names.

HELD, Name Transferred to Complainant.

Domain name is identical or confusingly similar to the trademark in which Complainant has rights.  Neither adding a top level domain nor placing a hyphen between words in the mark extinguish the Complainant’s rights in its registered mark.  Further, Respondent has no rights or legitimate interests in respect of the domain name.

Respondent offered to sell each domain name to Complainant for $800, representing an excess of out-of-pocket costs associated with registering and maintaining the domain names.  Respondent registered the domain names primarily for the purpose of disrupting competitor Complainant’s business.  Finally, Respondent has a pattern of conduct of registering many other domain names that incorporate famous marks.  All these point to Respondent’s bad faith registration and use of the domain names.

Policies Referred to

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999.

Registration Agreements Referred to

Network Solutions Service Agreement Version 5.0.

Cases Referred to
--

Panel Decisions Referred to

CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO).

Nabisco Brands Co. v. The Patron Group, D2000-0032 (WIPO).

Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO).

Johnson, Panelist: -

PARTIES

The Complainant is R&R Operating Partnership, L.P., Allentown, PA, USA ("Complainant"). The Respondent is Karen Hanover, Laguna Beach, CA, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME(s) 

The domain names at issue are "Cherrydalefarms.com" and "Cherrydale-farms.com", registered with Network Solutions Inc ("NSI").

PANELIST

Honorable Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 07/05/2000; The Forum received a hard copy of the Complaint on 07/05/2000. 

On 07/10/2000, NSI confirmed by e-mail to The Forum that the domain names "Cherrydalefarms.com" and "Cherrydale-farms.com" are registered with NSI and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 5.0 and
has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On 07/10/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 07/31/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via email, post and fax, and to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts by email. 

On 08/02/2000, 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 08//03/2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed Honorable Carolyn Marks Johnson as Panelist.

Having reviewed the communications records in the case file, 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 Forum’s Supplemental Rules and any rules and principles of law that the panel deems applicable, without the benefit of any
Response from the Respondent.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

        A. Complainant

The Complainant contends that the Respondent has registered a domain names that are identical to and confusingly similar to its service mark registered for and in use by the Complainant. Further, the Complainant contends that the Respondent has no rights or legitimate interests to the domain names, and that the respondent has registered and is
using the domain names in bad faith. 

The Complainant asserts that the Respondent purposes in registering the domain name are: 1) to divert and confuse consumers who enter the domain names in question when looking for the Complainant’s official website; 2) to confuse consumers into believing that the Respondent is the source (or an authorized source) of the Complainant’s
products; and 3) to sell the domain names at a profit to the Complainant if possible.

The Complainant contends that the Respondent is a cybersquatter. The Complainant asserts that the Respondent has registered numerous domain names incorporating the trademarks and names used by major fundraising businesses
 (particularly those selling candy and gift-wrap).

     A.Respondent 

The Respondent submitted no response in this matter. As a result, all reasonable inferences of fact in the allegations of the Complainant will be deemed true.

FINDINGS

The Complainant owns rights in the U.S. trademark registrations for the mark CHERRYDALE FARMS (Registered 09/07/1993; No. 1,791,779) for candies and cookies and (Registered 09/09/1986; No. 1,408,811) for candies, fruits, and honey. The Cherrydale mark has been used in commerce since 1943. The Complainant also sells other fundraising products including gift-wrap, collectibles, gourmet goods, candles, Passover foods, and accessories. The Complainant owns the domain name <cherrydale.com>. 

The Respondent is known as Funraisers, LLC or Funraiser$, LLC. The Respondent is developing a fundraising website located at the domain name <funraisers.com>. The Respondent registered the domain names in question on February 18, 2000. There is no website located at these domain names. 

The Respondent has engaged in a pattern of conduct by registering many other domain names that incorporate famous marks.

The Respondent has no affiliation with the Complainant and is not an authorized reseller or distributor of the Complainant’s products. 

On June 8, 2000, the Complainant sent the Respondent a "cease and desist" letter by fax and e-mail. The Respondent offered to sell each domain name for $800. Discussions regarding the sale of the domain names ended after the Complainant refused to pay the Respondent’s asking price.

DISCUSSION 

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") directs that the complainant must prove each of the following three elements to support a claim 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.

        Identical and/or Confusingly Similar

The Complainant has rights in the registered mark CHERRYDALE FARMS. 

Adding the top level domain ".com" does not alter the Complainant’s rights in the mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as "net" or "com" does not affect the domain name for the purpose of determining whether it is identical or confusingly
similar).

Placing a hyphen between the words in the Complainant’s mark does not extinguish the Complainant’s rights in its registered mark. See CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that putting a hyphen between words of the Complainant’s mark is identical to and confusingly similar to Complainant’s mark). 

The Respondent’s domain names are identical to and confusingly similar to the Complainant’s mark.

        Rights or Legitimate Interests

The Complainant asserts that the Respondent has no rights or legitimate interests in the domain names in question. The Respondent has not denied that assertion.

The Respondent is not commonly known by the domain names in question. Policy ¶ 4(c)(ii). The Respondent does business as Funraisers, LLC. The Respondent has no affiliation with the Complainant and is not an authorized reseller or distributor of the Complainant’s products. 

The Respondent is not using the domain names in connection with a bona fide offering of goods or services or for a fair and legitimate noncommercial use. Policy ¶ 4(c)(i), (iii). 

The panel concludes that the Respondent has no rights or legitimate interests in the domain names in question.

        Registration and Use in Bad Faith

The Complainant asserts that the Respondent acted and is acting in bad faith. The Respondent has not denied that assertion.

The Respondent offered the domain names for sale for $800. This is a price in excess of out-of-pocket costs associated with registering and maintaining the domain name. Policy ¶ 4(b)(i). See Nabisco Brands Co. v. The Patron Group, D2000-0032 (WIPO Feb. 23, 2000) (finding that the Respondent registered and used the domain names to profit where Respondent offered to sell the domain names for $2,300 per name). 

The Respondent registered the domain names primarily for the purpose of disrupting the business of a competitor. Policy ¶4(b)(iii). 

The Respondent has engaged in a pattern of conduct of registering domain names that incorporate the marks of other fundraising companies. Policy ¶ 4(b)(ii). For instance, the Respondent has registered <genesisfundrasing.com>, <spectrumfundraising.com>, <hersheys-fund-raising.com>, <innisbrookfundraising.com>, <marsfundraising.com>, etc. The Respondent has also registered domain names using numerous other famous brand names, <citibank-visa.com>, <wrigleys-gum.com>, <sunkistorgangejuice.com>, etc. 

The panel concludes that the domain names were registered and used in bad faith.

DECISION

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 names, "Cherrydalefarms.com" and "Cherrydale-farms.com be transferred from the Respondent to the Complainant.
  Honorable Carolyn Marks Johnson
Dated: 08/17/2000