Decision for dispute CAC-UDRP-108412

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant has demonstrated ownership of rights in the trademark GHIRARDELLI for the purposes of standing to file a UDRP complaint.

In particular, the Complainant is the owner of trademark registrations for GHIRARDELLI including the following:

The Complainant, founded in 1845, is a chocolate maker based in Switzerland. The Complainant has 12 production sites in Europe and the United States and its products are distributed via 38 subsidiaries, 500 own retail shops and a comprehensive network of more than 100 distributors worldwide. The Complainant has more than 15 thousand employees and made a revenue of CHF 5.47 billion in 2024. The Complainant acquired the Ghirardelli Chocolate Company (“Ghirardelli”) in 1998. Established in 1852, Ghirardelli is one of the oldest chocolate manufacturers in the United States and is headquartered in San Francisco, California.

The disputed domain name <ghirardellimall.com> was registered on December 26, 2025, while the disputed domain name <ghirardellimalls.com> was registered on January 10, 2026. At the time of this decision, the disputed domain names resolve to inactive webpages. According to undisputed evidence provided by the Complainant, the disputed domain names used to resolve to websites that featured the Complainant's GHIRARDELLI trademark prominently at the top of the webpages, displayed images of GHIRARDELLI‑branded products offered at substantial discounts, did not disclaim in a clear and prominent manner their lack of relationship with the Complainant and requested users to provide personal data (including name, address, email, phone number, and credit card information) when interacting with the websites and proceeding to checkout. Before initiating the present proceedings, the Complainant submitted takedown notices, resulting in the suspension of the websites to which the disputed domain names were used to resolve.

The Complainant contends that the requirements of the Policy have been met and that the disputed domain names should be transferred to it.

In particular, the Complainant argues that the disputed domain names are confusingly similar to its GHIRARDELLI trademark as this trademark is contained in its entirety and recognizable within the disputed domain names. Further, the Complainant contends that ".com" gTLD is viewed as a standard registration requirement and as such is disregarded from comparison between the disputed domain names and the Complainant's trademark.

Regarding the second UDRP element, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent holds no trademark rights in the disputed domain names and has also never been commonly identified by the disputed domain names. The Respondent has no relationship or association with the Complainant and has never been granted any license or authorization to use the well‑known GHIRARDELLI trademark in any form, including as part of the disputed domain names. The Respondent has used the disputed domain names for websites that impersonate Complainant, which cannot be considered as use in connection with a bona fide offering of goods or services. The disputed domain names also pose a clear phishing risk to internet users through deceptive branding, user data collection, and misleading representations, and such conduct can never confer rights or legitimate interests upon the Respondent. The disputed domain names are composed of the Complainant’s well‑known GHIRARDELLI trademark together with the terms “mall” and “malls’. In light of the fact that the Complainant operates more than 500 retail stores, which are located, among other places, in shopping centers, this combination is likely to cause Internet users to believe that the disputed domain names are connected to the Complainant or its products, when no such connection exists. The Complainant therefore contends that the disputed domain names give rise to a significant likelihood of implied affiliation with the Complainant and its goods.

With respect to the third UDRP element, the Complainant holds that its GHIRARDELLI trademark is well-known and that the Respondent has registered the disputed domain name with actual knowledge of the Complainant's trademark. The fact that the disputed domain names were used for websites that impersonate the Complainant clearly indicates the Respondent's awareness of the Complainant and its GHIRARDELLI trademark. Such use of the disputed domain names also clearly demonstrates bad faith on the Respondent's side. The current inactivity of the disputed domain names does not preclude a finding of bad faith under the principle of passive holding. The Complainant also emphasizes that the Respondent provided false or incomplete contact details for both disputed domain names and that appears as the Respondent in a number of previous UDRP proceedings, where it was found that the registration and use of the domain names were in bad faith. These precedents undoubtedly constitute evidence of the Respondent’s pattern of bad faith conduct and strengthen the Complainant's contention that the disputed domain names were registered and are being used in bad faith.

No administratively compliant Response has been filed.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain names (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names have been registered and are being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

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

• that the disputed domain names registered by the respondent are identical or confusingly similar to a trademark or service mark in which the complainant has rights;
• that the respondent has no rights or legitimate interests in respect of the disputed domain names; and
• that the disputed domain names have been registered and are being used in bad faith.

I Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant's trademark and the disputed domain names, as stipulated in section 1.7 of WIPO Overview of WIPO Panel Views on Select UDRP Questions (“WIPO Overview 3.1”).

The Complainant has shown rights in respect of the GHIRARDELLI trademark for the purposes of the Policy (WIPO Overview 3.1, section 1.2.1).

The entirety of the Complainant's trademark is reproduced within the disputed domain names. Accordingly, the disputed domain names are confusingly similar to the Complainant's trademark for the purposes of the Policy (WIPO Overview 3.1, section 1.7).

Although the addition of other terms, here “mall” and "malls", may bear on the assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain names and the Complainant’s trademark for the purposes of the Policy (WIPO Overview 3.1, section 1.8).

In addition, it is well established that “.com”, as a generic Top-Level Domain, can be disregarded in the assessment of the confusing similarity between the disputed domain names and the Complainant’s trademark (WIPO Overview 3.1, section 1.11.1).

The Panel, therefore, finds that the first element of the Policy has been established. 

II Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the Policy or otherwise.

In particular, the Panel notes that there appears to be no relationship between the Respondent and the Complainant and that the Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s GHIRARDELLI trademark. There appears to be no element from which the Panel could infer the Respondent’s rights and legitimate interests in the disputed domain names, or that the Respondent might be commonly known by the disputed domain names.

Furthermore, based on the undisputed evidence provided by the Complainant, the disputed domain names were, prior to successful takedowns by the Complainant, used for websites that featured the Complainant's GHIRARDELLI trademark prominently at the top of the webpages, displayed images of GHIRARDELLI‑branded products offered at substantial discounts, did not disclaim in a clear and prominent manner their lack of relationship with the Complainant and requested users to provide personal data (including name, address, email, phone number, and credit card information) when interacting with the websites and proceeding to checkout. The Panel holds that the Respondent’s use of the disputed domain names does not meet the Oki Data Test requirements (as established in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903), because the website did not disclose the lack of relationship between the Respondent and the Complainant (WIPO Overview 3.1, section 2.8.). On the contrary, in the Panel’s view, the websites to which the disputed domain names previously resolved were not intended to establish the Respondent as a legitimate reseller of the Complainant’s products, but rather to facilitate impersonation of the Complainant, likely for fraudulent purposes. Panels have categorically held that the use of a domain name for illegitimate activity (here, claimed impersonation and passing off) can never confer rights or legitimate interests on a respondent (WIPO Overview 3.1, section 2.13.1).

The Panel also finds that the structure of the disputed domain names, which contains the Complainant’s GHIRARDELLI trademark in combination with the terms "mall" and "malls", carries a high risk of implied affiliation (see WIPO Overview 3.1, section 2.5.1). These additional words closely correspond to the Complainant, who operates more than 500 retail stores, which are located, among other places, in shopping centers.

Having in mind the above, the Panel finds the second element of the Policy has been established.

III Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of domain names in bad faith.  

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith (see WIPO Overview 3.1, section 3.2.1).

Regarding the registration of the disputed domain names in bad faith, the Panel holds that the Respondent had the Complainant in mind when registering the disputed domain names. The Complainant’s GHIRARDELLI trademark has been registered and used for more than a century before the Respondent registered the disputed domain names, so it is unlikely that the Respondent was not aware of this trademark. Furthermore, the content of the websites to which the disputed domain names are used to resolve leaves no room for doubt on the Respondent’s knowledge of the Complainant and its GHIRARDELLI trademark and evidences that the Respondent actually had the Complainant in mind when registering the disputed domain names. 

 Additionally, the Respondent's record shows a clear intent to target third-party trademarks, as the Respondent has been a party to a number of previous UDRP proceedings, all of which were decided against the Respondent. Such behavior constitutes a pattern of conduct preventing a trademark holder from reflecting its mark in a domain name in accordance with paragraph 4(b)(ii) of the Policy.

Additionally, the Respondent’s record evidences a clear intent to target third-party trademarks, as it has been involved in numerous prior UDRP proceedings, all of which were decided adversely to it. Such conduct constitutes a pattern of conduct of preventing a trademark holder from reflecting its mark in a domain name within the meaning of paragraph 4(b)(ii) of the Policy (see also WIPO Overview 3.1, section 3.1.2).

Due to the above, the Panel finds that the disputed domain names have been registered in bad faith. 

As indicated above, based on the undisputed evidence provided by the Complainant, the disputed domain names used to resolve to websites that featured the Complainant's GHIRARDELLI trademark prominently at the top of the webpages, displayed images of GHIRARDELLI‑branded products offered at substantial discounts, did not disclaim in a clear and prominent manner their lack of relationship with the Complainant and requested users to provide personal data (including name, address, email, phone number, and credit card information) when interacting with the websites and proceeding to checkout. Such behavior manifestly indicates bad faith on the Respondent’s side. In that sense, panels have held that the use of a domain name for illegitimate activity (such as impersonation of the Complainant and passing-off) constitutes bad faith (WIPO Overview 3.1, section 3.4). Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitute bad faith under the Policy.

While the disputed domain names no longer resolve to active websites, such a change of use and current passive holding does not prevent a finding of bad faith given the totality of the circumstances of the case at hand (WIPO Overview 3.1, section 3.3).

The Panel finds that the disputed domain names have been both registered and are being used in bad faith, and consequently that the Complainant has established the third element of the Policy.