Decision for dispute CAC-UDRP-108648

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

The Complainant owns numerous trade mark registrations for its GHIRADELLI mark including, in particular, United States trade mark number 205776 registered on November 17, 1925 and European Union trade mark number 003716453 registered on July 27, 2005.

Established in 1845, the Complainant is a Swiss producer of chocolate and confectionery products, within the premium chocolate industry. Its portfolio comprises approximately 2,500 products, marketed under several brands such as LINDT, GHIRARDELLI, RUSSELL STOVER, WHITMAN’S, CAFFAREL or HOFBAUER, and its products are distributed across more than 120 countries.

In 1998, the Complainant acquired the Ghirardelli Chocolate Company (“Ghirardelli”). Ghirardelli, founded in 1852 and based in San Francisco, California, ranks among the oldest chocolate manufacturers in the United States. Its products are distributed through a combination of company-operated stores, third-party retailers, and wholesale distribution channels. For the fiscal year 2024 Ghirardelli generated sales of USD 888 million. The Complainant owns the domain name <ghirardelli.com>, which was registered on 24 June 1998 and resolves to a website containing comprehensive information about the Complainant and its GHIRARDELLI products.

The disputed domain names were both registered within days of each other in April 2026. Although, at the date of filing neither disputed domain name resolved to an active site, the disputed domain name <ghirardelliusshop.com> previously resolved to a website that closely imitated the look and feel of the Complainant’s official GHIRARDELLI website, prominently displayed the GHIRARDELLI mark at the top of the webpage, featured images of GHIRARDELLI‑branded products, and offered such products for sale at substantial discounts.

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

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.

The Complainant has demonstrated that it owns registered trade mark rights for its GHIRADELLI trade mark as set out above. As submitted by the Complainant, this mark is wholly incorporated into each of the disputed domain names and each of them are therefore confusingly similar to the Complainant’s trade mark. The inclusion of the additional terms, including the common abbreviation for the United States, namely, “us” in each of the disputed domain names and respectively the terms “mall” and “shop”, do not distinguish either of the disputed domain names and do not prevent a finding of confusing similarity.

The Complainant has submitted that the Respondent does not appear to have trade mark rights for, nor is it commonly known by each of the disputed domain names. It says further that the Respondent is neither connected to, nor affiliated with, the Complainant, who has not permitted or licensed the Respondent’s use of the GHIRARDELLI mark in any way. Further, says the Complainant, the Respondent is not using either of the disputed domain names in connection with a bona fide offering of goods or services, nor is it making a legitimate non-commercial or fair use of them. The Complainant notes that although neither of the disputed domain names currently resolve to any active website, the disputed domain name <ghirardelliusshop.com> previously resolved to a website that falsely masqueraded as if it was owned by, or affiliated with, authorised by, or endorsed by, the Complainant. This was in circumstances that the website closely imitated the look and feel of the Complainant’s official GHIRARDELLI website, prominently displayed the GHIRARDELLI mark at the top of the webpage, featured images of GHIRARDELLI‑branded products, and offered such products for sale at substantial discounts. The Complainant has noted that this website requested extensive personal and financial information from users, including name, postal address, e-mail address, telephone number, and credit card details when users interacted with the site and proceeded to checkout. The Complainant has also submitted that the website did not meet the requirements of the Oki Data factors as set out at the WIPO Overview 3.1, section 2.8.1, namely and in particular did not provide any clear or prominent disclosure regarding the absence of a relationship between the Respondent and the Complainant. Finally, the Complainant submitted that the use of the disputed domain name <ghirardelliusshop.com> for the purpose of the Respondent passing itself off as if it was the Complainant can never confer rights or legitimate interests.

The Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in each of the disputed domain names. The Respondent has not rebutted the Complainant’s prima facie case and has not come forward with any relevant evidence demonstrating rights or legitimate interests in either of the disputed domain names, whether as set out in the Policy or otherwise. Accordingly, the Panel finds that the second element of the Policy has been established.

Both of the disputed domain names were registered by the Respondent within days of each other in April 2026 and more than a century after the registration of the Complainant’s first GHIRADELLI mark in the United States. The Panel notes that the GHIRADELLI chocolate business has a long history and is very well established in the United States. In particular, it distributes its products through 600 outlets in the United States and has had an Internet presence at the domain name <ghirardelli.com> since 1998. It also has a very substantial social media presence, in particular, having more than one million followers on Facebook. This evidence, together with the fact that the disputed domain name, <ghirardelliusshop.com> formerly resolved to a website that used the GHIRARDELLI mark and was overall extremely similar to the Complainant’s website and offered the Complainant’s products, supports very strong inference that the Respondent was well aware of the Complainant’s mark and business when it registered each of the disputed domain names.

Under paragraph 4(b)(iv) of the Policy there is evidence of registration and use of the disputed domain name in bad faith where a Respondent has used the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the website.

In this case the Respondent has used the disputed domain name <ghirardelliusshop.com> to divert Internet users to its website at which it masquerades as if it is the Complainant, or is affiliated with the Complainant, without distinguishing itself properly, or using a disclaimer. The website to which this disputed domain name formerly resolved featured the Complainant’s trade mark and logo and was confusingly similar in look and feel to the Complainant’s website and offered the Complainant’s products for sale at discounted prices. Internet users could easily have been confused into thinking that this was the Complainant’s United States website, or was authorised by the Complainant. This amounts to conduct in terms of paragraph 4(b) (iv) of the Policy and is evidence of registration and use of the disputed domain name in bad faith under the Policy.

While there is no evidence that the disputed domain name <ghirardelliusshop.com> has ever been used since its registration in April 2026, panels have found that the non-use of a domain name (including an error page as in this case) would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3.

Previous panels have found bad faith in circumstances of the passive holding of a disputed domain name where (i) there is a high degree of distinctiveness or reputation of the complainant’s mark, (ii) the respondent has failed to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent has concealed its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) it is not plausible that the disputed domain name will be used in good faith.

In this case the Complainant’s GHIRADELLI mark is highly distinctive and is long established and very well reputed in the United States and it has a substantial web and social media presence. The Respondent failed to explain its registration of the disputed domain name <ghirardelliusmall.com>. The Respondent attempted to conceal its identity by using a privacy service. Considering the degree of renown attaching to the GHIRADELLI mark, the use in bad faith use of the other disputed domain name <ghirardelliusshop.com> as described above and the fact that <ghirardelliusmall.com> was registered shortly before the other disputed domain name, it is difficult to see any plausible justification for the registration of this disputed domain name by the Respondent and it is most likely that the Respondent, even though he appears to be based in the Philippines, did not intend to use the disputed domain name in good faith. For these reasons the Panel also finds that the disputed domain name <ghirardelliusmall.com> was registered and has been used passively in bad faith and that the Complaint also succeeds under section 4(a)(iii) of the Policy.