Sunday, April 16, 2017

Hershey scores a sweet victory to recover a salaciously used domain name

In Hershey Chocolate & Confectionery Corporation v. L. Roman T. Sorrells, PARI’ZA Studios, WIPO Case No. D2017-0128 (John C. McElwaine, March 31, 2017), the Panel ordered the transfer of hersheykyss.com to Complainant owner of the famous chocolate brand KISSES. This was actually a case I worked on when I had the privilege of serving as President and Counsel to Hershey Chocolate & Confectionery Corporation.

I learned of this infringing domain name through a domain watch I had ordered to monitor domain names that potentially infringe on the HERSHEY'S and KISSES trademarks. We offer this type of domain watching service at my new firm, Alprin Law Offices, and I highly recommend it for anyone concerned about cybersquatting and/or typosquatting. A domain watch is an inexpensive way to monitor and protect one's valuable intellectual property from being infringed, which in the case of hersheykyss.com involved the association of famous trademarks to unsavory sexual content. It is almost always money well spent, and that was certainly the case here.

As to the merits of the case, which fit the mold of classic typosquatting and tarnishment, the Panel marched through the 3 factors necessary for a complainant to prevail in a UDRP dispute. First, examining the similarity of the disputed domain to Complainant's marks, the Panel held that "the consensus view is that a domain name consisting of a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name." As to the specific domain and marks, the Panel found that "the difference between HERSHEY and HERSHEY’S is not so significant as to create a different commercial impression" and "the replacement of the 'i' in the word 'kiss' with the letter 'y' leaves a visually similar word with an identical pronunciation."

Moving to the second factor, whether Respondent has legitimate rights or interests in the disputed domain, Respondent filed no substantive response (though it did contact WIPO informally) and the Panel held that "[t]he silence of a respondent may support a finding that it has no rights or legitimate interests in respect of the domain name" and noted that "previous UDRP panels have found that when respondents have not availed themselves of their rights to respond to complainant, it can be assumed in appropriate circumstances that respondents have no rights or legitimate interests in the domain name at issue." More specifically as to the second factor, the Panel found that Respondent, who claimed to register the domain name for a "client" who is a "model" named Jackie Hershey, "Respondent’s leasing of domain names to a third party for use without complainant’s authorization does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy 4(c)(i) or 4(c)(iii)." Going further, the Panel held that "even if it was accepted that Respondent (standing, as if it were, in the client’s shoes) thought his client had a bona fide intention to use the surname, Hershey, in a domain name, such good faith evaporates when Respondent intentionally added the term 'KYSS' to the surname thereby creating a domain name that is confusingly similar to and dilutive of the Complainant’s HERSHEY’S KISSES trademark. The logo incorporating 'Hershey' featured on the website has a striking resemblance to Complainant’s logo mark, and the Panel infers that this was a deliberate attempt to draw an unjust association with Complainant’s name."

As to the final factor, Respondent's bad faith use and registration of the disputed domain, the Panel stated that "[b]ad faith can be found where respondents 'knew or should have known' of complainant’s trademark rights and nevertheless registered a domain name in which it had no right or legitimate interest." With this in mind, the Panel concluded that "Respondent linked the Domain Name to a website that mimicked Complainant’s stylized HERSHEY’S trademark. The Domain Name also includes a misspelling of Complainant’s HERSHEY’S KISSES trademark. The Panel finds that the Respondent (or his client) unquestionably had Complainant’s HERSHEY’S Mark in mind when the Domain Name was selected."

Finally, moving to the topic of tarnishment, the Panel noted that "intentional tarnishment of a complainant’s trademark may in certain specific circumstances constitute evidence of registration and/or use of a domain name in bad faith." In this case, Respondent denied in its informal communication to WIPO that the website at the disputed domain was pornographic. The Panel nevertheless found tarnishment: "the website in this case advertises 'provocative videos' and 'sexy, hot behind the scenes' content. Complainant’s candy products are known to be enjoyed by adults and children alike. The Panel finds that the website in this case is of a kind that could reasonably tarnish" Complainant’s marks.

And so, the Panel ordered the transfer of the domain to Hershey. Props to my friends at Downs Rachlin Martin PLLC for the fine job they did on this case. Congratulations!

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