The domain name Cocochoco.com became the apple of discord between its registrant, domain investor Mike Mann, and Israel-based G.R. GLOBAL COSMETICS LTD.
The latter claims rights to the COCOCHOCO mark since 2014 in the European Union and since 2020 in the US. The domain, meanwhile, has been in the possession of Mike Mann’s Domain Market outfit since 2009.
The domain CocoChoco.com consists of two words, “coco” and “choco” according to the Respondent and it’s thus generic. It’s available to acquire via DAN.com for an eye-watering $194,888 dollars.
Charles A. Kuechenmeister, sole panelist at the Forum (NAF) delivered a decision ordering the domain CocoChoco.com to remain with the Respondent as their domain predates the Complainant’s marks by several years.
The domain transfer was denied.
G.R. GLOBAL COSMETICS LTD v. Domain Administrator / DomainMarket, LLC d/b/a DomainMarket.com
Claim Number: FA2202001984654
PARTIES
Complainant is G.R. GLOBAL COSMETICS LTD (“Complainant”), represented by Mr Aryeh Reif of Reif & Reif, Israel. Respondent is Domain Administrator / DomainMarket, LLC, d/b/a/DomainMarket.com (“Respondent”), represented by Brian Leventhal of Brian H. Leventhal, Attorney at Law, P.C., Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is , registered with eNom, LLC.
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.
Charles A. Kuechenmeister, Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on February 17, 2022; the Forum received payment on February 17, 2022.
On February 17, 2022, eNom, LLC confirmed by e-mail to the Forum that the domain name (the Domain Name) is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 21, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of March 18, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@cocochoco.com. Also on February 21, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
After the Complaint was served, a firm named DomainMarket, LLC d/b/a DomainMarket.com filed a Response stating that it was the registrant of the Domain Name. The Response was received and determined to be complete on March 18, 2022.
On March 28, 2022, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
RELIEF SOUGHT
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant distributes haircare products. It has rights in the COCOCHOCO mark through its registrations of that mark with the European Union Trademark Office (“EUTM”) and the United States Patent and Trademark Office (“USPTO”). Respondent’s Domain Name is identical or confusingly similar to Complainant’s COCOCHOCO mark as it incorporates the mark in its entirety, merely adding the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the Domain Name. It is not commonly known by the Domain Name, and Respondent does not use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use, but instead hosts parked, pay-per-click links on the Domain Name’s resolving website, and offers the Domain Name for sale.
Respondent registered and uses the Domain Name in bad faith. Respondent is making no active use of the Domain Name, attempts to sell the Domain Name to Complainant for a price far exceeding the costs related to the Domain Name, registered the Domain Name to prevent Complainant from reflecting its mark in a corresponding domain name, registered the Domain Name to disrupt the Complainant’s business, and registered the Domain Name to attract for commercial gain Internet users to its web site. Finally, Respondent registered the Domain Name with actual knowledge of Complainant’s rights in the COCOCHOCO mark.
B. Respondent
Respondent has rights and legitimate interests in the Domain Name. It is in the business of buying and selling domain names comprised of generic and descriptive terms, and this Domain Name is one of many domain names in its inventory. The web site resolving from it displays the selling price and other similar kinds of information. It does not include any pay-per-click or other advertising and has never been used to sell goods or services competitive with Complainant. Its business of reselling domain names is a bona fide offering of goods or services. It registered the Domain Name because it is a creative combination of two generic roots which refer to chocolate. It had no knowledge of Complainant when it registered the Domain Name and has never offered to sell it to Complainant or any of its competitors.
Respondent did not register and does not use the Domain Name in bad faith. It had no knowledge of Complainant or its mark when it registered the Domain Name and had no intent to abuse any trademark rights of Complainant. Respondent offers the Domain Name, along with thousands of other domain names, for sale as part of its legitimate business. It never offered to sell the Domain Name to Complainant. Complainant has failed to prove its allegations, which are not true.
FINDINGS
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.”
Paragraph 4(a) of the Policy requires a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(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; and
(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 COCOCHOCO mark was registered to Complainant with the EUTM and the USPTO (EUTM Reg. 13,131,339, USPTO Reg. 6,299,353) on December 26, 2014 and March 23, 2021 respectively (EUTM and USPTO registration certificates submmitted as Complaint Annexes 1 and 2). Complainant’s registration of its mark with these authorities establishes its rights in that mark for the purposes of Policy ¶ 4(a)(i). Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”).Respondent’s Domain Name is identical or confusingly similar to Complainant’s COCOCHOCO mark because it incorporates that mark in its entirety, merely adding the “.com” gTLD. This change does not distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). Abt Elecs., Inc. v. Ricks, FA 904239 (Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), at ¶ 1.7, states that the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.” Notwithstanding the changes described above, Complainant’s mark is clearly recognizable within the Domain Name.
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the COCOCHOCO mark, in which Complainant has substantial and demonstrated rights.
Rights or Legitimate Interests
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) Before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable 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; or
(ii) The respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) it is not commonly known by the Domain Name, and (ii) Respondent does not use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use but instead hosts parked, pay-per-click links on the Domain Name’s resolving website, and offers the Domain Name for sale. These allegations are addressed as follows:
The information furnished to the Forum by the registrar lists “Domain Administrator” as the registrant of the Domain Name. After the Complaint was served, a firm named DomainMarket, LLC, d/b/a/DomainMarket.com, appeared and stated that it was the registrant of the Domain Name. Neither of these names bears any resemblance to the Domain Name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, and in cases where no response has been filed, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same), Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel is satisfied that the Respondent has not been commonly known by the Domain Name for the purposes of Policy ¶ 4(c)(ii).
Complaint Annex 10 consists of screenshots of the web site resolving from the Domain Name at various times beginning in 2006. The first of these, dating from 2006, appears to be a typical pay-per-click site. With the exception of the screenshot dating from 2013, which indicates that the Domain Name has expired and invites renewal, the remaining pages are sponsored by Respondent DomainMarket.com and advertise the Domain Name, and others, for sale. These pages are clearly the web site of a domain reseller and contain only general offers to sell. They do not contain links to other sites. According to the WHOIS report submitted as Complaint Annex 3 and the allegations in the Complaint, the Domain Name was created and registered to Respondent in 2009. The pay-per-click site dating from 2006 displayed on the first page of Complaint Annex 3 therefore cannot be attributed to Respondent.
It is well settled that buying and selling domain names consisting of generic, descriptive terms is a legitimate business, as long as there is no evidence that the respondent intended to target the business of a complainant or register a domain that appears to derive its value from an association with a specific complainant. Platterz Inc. v. Andrew Melcher, FA 1729887 (Forum June 19, 2017) (holding that “investing in genuinely generic terms, for purpose of resale, is a legitimate business and that the acquisition of domain names consisting of common, dictionary terms for resale can confer rights and legitimate interests upon entrepreneurs who engage in this activity”), Centroamerica Comercial, Sociedad Anonima de Capital Variable (CAMCO) v. Michael Mann, Case No. D2016-1709 (WIPO Oct. 3, 2016) (“While the mere registration of such a domain name will not generally give rise to rights or legitimate interests in the name, the Panel finds that the offer of the disputed domain name for sale in accordance with the Respondent’s general business activities does give rise to a legitimate interest in this case”), Greenfort Partnerschaft von Rechtsanwälten mbB v. CheapYellowPages.com, Case No. D2016-0796 (WIPO June 16, 2016) (“Considering this against the background of the Respondent’s apparent business in marketing, developing, buying and selling generic, intuitive, geographic, surname and common use domain names over the years, and that there is no evidence of the Respondent intentionally targeting the Complainant and/or its business in using the Disputed Domain Name, the Majority of the Panel considers the Respondent has rights or legitimate interests in the Disputed Domain Name.”).
The evidence presented by Complainant shows that Respondent is and has been engaged in business as a domain reseller. It offers the Domain Name for sale along with many, many others and is not using it in any misleading or deceptive way. The name itself consists of recognized abbreviations of the generic term “chocolate” and, notwithstanding its close similarity to Complainant’s mark, there is no evidence of intent to target the rights of this Complainant. The Domain Name was registered by Respondent in April 2009. Complainant’s rights in its COCOCHOCO mark first arose just three months earlier, in January of that same year at the very earliest (Complaint p. 2, USPTO registration certificate submitted as Complaint Annex 2 shows a first use in January 2009). Complainant is domiciled in Israel, Respondent in the U.S. Complainant registered its mark with the EUTM in 2014 and did not apply for a U.S. trademark until 2020 (EUTM and USPTO registration certificates submitted as Complaint Annexes 1 and 2 show dates). There is no evidence showing how Respondent could have become aware of Complainant or its mark in the three months between January and April of 2009. The fact that COCHOCO is composed of generic or descriptive terms is borne out by its having been used by an unknown third party as early as 2006 (screenshot of web site resolving from included in Complaint Annex 10), at least two years before Complainant’s first use of the COCOCHOCO mark.
Complainant offered three emails which it claims demonstrate that Respondent was making no active use of the Domain Name and registered it to prevent Complainant from acquiring it unless it paid an exorbitant price for the Domain Name. The first two of these, Complaint Annexes 11 and 12, dated in October of 2011, purport to be from an unidentified account holder at auctions@godaddy.com. The Annex 11 email notes that the current registration of the Domain Name is about to expire and offers an opportunity for Complainant to acquire it. The Annex 12 email acknowledges that Complainant did submit a bid to acquire the Domain Name. Neither of these emails, however, reveals any connection to Respondent whatever. There is no evidence that either of the came from Respondent. The Annex 13 email appears to have been sent in 2012 from the email address dmborker@domainmarket.com from a person who claims to be a domain broker for Respondent, the owner of the Domain Name. It states that the owner of the Domain Name has decided to auction the Domain Name or sell it outright and invites Complainant to contact this person if it has interest in buying the Domain Name. As stated above, all three emails are offered to prove that Respondent is making no active use of the Domain Name and registered it to prevent Complainant from acquiring it unless it paid an exorbitant price for the Domain Name. These arguments are relevant to the Policy ¶ 4(a)(iii) bad faith element of the case, but have no bearing upon the Policy ¶ 4(a)(ii) rights or legitimate interests element. Respondent is in the legitimate business of creating and selling Domain Names comprised of generic or descriptive terms. This is a bona fide offering of good or services and is evidence of rights or legitimate interests in the Domain Name, not the contrary.
The evidence before the Panel fails to establish a prima facie case of no rights or legitimate interests. Respondent prevails on this element of the case.
Registration and Use in Bad Faith
Since Complainant failed to establish a prima facie case on the Policy ¶ 4(a)(ii) element, the Panel need not analyze the bad faith element addressed in Policy ¶ 4(a)(iii). Record Connect, Inc. v. Chung Kit Lam / La-Fame Corporation, FA 1693876 (Forum Nov. 3, 2016) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name), Sheet Labels, Inc. v. Harnett, Andy, FA 1701423 (Forum Jan. 4, 2017) (finding that because the respondent had rights and legitimate interests in the disputed domain name, its registration of the name was not in bad faith). The Panel elects not to analyze the Policy ¶ 4(a)(iii) element.
DECISION
Complainant not having established all three elements required under the Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the Domain Name REMAIN WITH Respondent.
Charles A. Kuechenmeister, Panelist
Dated: March 30, 2022
