Decision for dispute CAC-UDRP-108690

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 is the owner of multiple registered trademarks for RUSSELL STOVER including, for example:

United States of America Registered Trademark Number 739454 for the word mark RUSSELL STOVER, registered on October 16, 1962; and

International Registered Trademark Number 1243266 for the word mark RUSSELL STOVER, registered on January 28, 2015, and designated in respect of multiple territories including China, where the Respondents are apparently based.

FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:

The Complainant is a long-established Swiss premium chocolate manufacturer (founded 1845), operating globally with extensive production and distribution facilities, 12 factories, over 40 subsidiaries, approximately 100 distributors, over 600 retail stores, and a workforce of over 15,000 employees. The Complainant reported sales of CHF 5.92 billion in 2025. The Complainant has grown internationally through acquisitions. Notably, the Complainant acquired the Russell Stover business (then known as Russell Stover Candies, LLC) and its eponymous brand in 2014 for approximately USD 1.6 billion in a widely reported transaction. Russell Stover is a historic chocolatier, founded 1923, and is now a division of the Complainant’s group following such acquisition, producing chocolates at three factories in the United States of America and selling through retail locations. The division generated USD 377 million in sales in 2024.

The Complainant owns extensive global trademark rights in RUSSELL STOVER and operates key domain names, including <russellstover.com>, used for over 20 years to promote its products and brand. The said brand has an established online and social media presence with tens of thousands of followers across Facebook, Instagram, and LinkedIn.

The Complainant has successfully enforced its rights in prior domain name dispute proceedings involving the RUSSELL STOVER mark.

The disputed domain names were registered on the following dates and at the following times:

<russellstoversz.com> on April 20, 2026 at 10:56:19 (UTC);

<russellstovershopz.com> on May 4, 2026 at 11:26:12 (UTC); and

<russellstroover.com> on May 4, 2026 at 13:44:42 (UTC), being just under two and a half hours after the registration of the disputed domain name <russellstovershopz.com>.

All of the disputed domain names are registered through the same accredited registrar, namely PDR Ltd. d/b/a PublicDomainRegistry.com.

The websites associated with the disputed domain names (now taken down) feature the same general appearance. Those associated with <russellstoversz.com> and <russellstovershopz.com> are nearly identical. That associated with <russellstroover.com> is similar, featuring the same tan-coloured bar at the top with navigational headings, sign-in functionality in the top-right corner, and references to payment card providers in the footer section of the website. All such websites bear to be official websites of the Complainant when they are not.

Complainant:

As a preliminary matter, the Complainant requests consolidation of the nominally different Respondents in the present proceeding on the basis that the disputed domain names are subject to common control and that consolidation would be fair, equitable, and procedurally efficient, noting that the websites associated with <russellstoversz.com> and <russellstovershopz.com> are nearly identical, while the website associated with <russellstroover.com> is substantially similar, that there is a close temporal proximity between the registration of <russellstroover.com> and <russellstovershopz.com> and a temporal proximity of less than a month between all three disputed domain names, that the disputed domain names use the same accredited registrar, that there is a similarity in naming conventions, that the Respondents are nominally based in China but with sparse identifying information and free e-mail addresses following a similar naming convention, and that all three websites associated with the disputed domain names were used for substantially the same purpose.

The Complainant submits that it satisfies the identity/confusing similarity requirement of the first element of the Policy, noting that the disputed domain names each incorporate the Complainant’s RUSSELL STOVER trademark in a manner that renders the mark clearly recognizable in side-by-side comparisons. The Complainant notes that the disputed domain name <russellstovershopz.com> incorporates the said trademark in its entirety together with the additional term “shop” and the letter “z”, that the disputed domain name <russellstoversz.com> consists of the said trademark with the mere addition of the letters “s” and “z”, and that the disputed domain name <russellstroover.com> constitutes a misspelling and typographical variation of the said trademark, by insertion of the letters “ro” between the “t” and “o” of the mark, noting that such additions and misspelling are insufficient to dispel confusing similarity under the Policy.

The Complainant submits, that to its knowledge, the Respondent does not have trademark rights corresponding to the disputed domain names, and has not used or prepared to use them in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The Complainant also contends that the websites associated with the disputed domain names originally presented themselves as, and created the false impression that they were, official online stores of the Complainant when they were not, using a highly similar appearance to the Complainant’s official site. The Complainant adds that the Respondent has not made a bona fide or fair use of the disputed domain names as a reseller under the cumulative Oki Data criteria, notably failing to provide a clear and sufficiently prominent disclaimer on the associated websites, actively misrepresenting the Complainant as the operator thereof, and featuring copyright statements referencing the Complainant’s legal entity, or in the case of the disputed domain name <russellstroover.com> referencing a “Premium Artisan Chocolate” generic identity. The Complainant argues that the composition of the disputed domain names creates a high risk of implied affiliation and does not constitute fair use, adding that the sites’ inactivity following takedown cannot cure the Respondents’ prior abusive use.

The Complainant asserts that the disputed domain names were registered and have been used in bad faith because they incorporate the Complainant’s RUSSELL STOVER mark with only minor additions, said mark is of a longstanding nature and internationally recognized (whereby the Respondent must have been aware of it), the websites associated with the disputed domain names have been used to impersonate the Complainant’s official online store including branding, logo and product images, the said sites offered products purporting to be those of the Complainant at heavily discounted prices, they misleadingly sought personal data from customers under the Complainant’s identity which may suggest phishing activity, and they also provided no disclaimer concerning non-affiliation and instead published misleading footer statements.

Respondent:

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.

As a preliminary matter, the Panel determines that it is appropriate to consolidate the Complainant’s cases against the multiple nominally different Respondents here, on the basis that the Complainant has made out a sufficient case that the websites associated with the disputed domain names are under common control due to proximity in date of registration, similar features both in the structure and appearance of said sites, similarity of impersonation of the Complainant, and similarity of features in the registrant data including that the Respondents are nominally based in China but with sparse identifying information and free e-mail addresses following a similar naming convention. None of the Respondents addressed the Complainant’s contentions on this topic. The Panel finds on the strength of the Complainant’s evidence that the disputed domain names are under common control. It appears to the Panel that it would be fair, equitable, and procedurally efficient to permit the consolidation, and the Panel so orders. The Panel will refer to the Respondents collectively as either “the Respondent” or “the Respondents” as the context requires in the remainder of this decision.

With regard to the first element of the Policy, the Complainant has demonstrated to the Panel’s satisfaction that it has UDRP-relevant rights in its RUSSELL STOVER trademark by virtue of the registered trademarks noted above.

The disputed domain names include recognizable variants of the said mark. The addition of the dictionary term “shop” and the letter “z”, in one case, of the letters “s” and “z” in another, and lastly the insertion of the letters “ro” are each insufficient to avoid a finding of confusing similarity under the Policy. The domain name suffix, “.com”, in each case can be disregarded for the purposes of the comparison (see the WIPO Overview of WIPO Panel Views on Select UDRP Questions (“WIPO Overview 3.1”), section 1.11.1). Accordingly, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s RUSSELL STOVER trademark.

With regard to the second element of the Policy, the Complainant asserts that the Respondent does not have trademark rights corresponding to the disputed domain names, and has not used or prepared to use them in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The Complainant also contends that the websites associated with the disputed domain names originally presented themselves as, and created the false impression that they were, official online stores of the Complainant when they were not, with a high degree of similarity to the Complainant’s official site. The Complainant adds that the Respondent would fail the cumulative Oki Data criteria, notably failing to provide a clear and sufficiently prominent disclaimer on the associated websites and actively misrepresenting the Complainant as the operator thereof. The Complainant concludes that the composition of the disputed domain names in each case leads to a high risk of implied affiliation and does not constitute fair use.

These submissions are made out on the evidence before the Panel, and are sufficient, in the Panel's view, to give rise to the requisite prima facie case that the Respondents have no rights or legitimate interests in the disputed domain names.

The Panel notes from the websites associated with the disputed domain names that the Respondents appear to be offering the Complainant’s goods for sale. Section 2.8.1 of the WIPO Overview 3.1 notes that panels have recognized that resellers using a domain name containing the complainant’s trademark to undertake sales related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the “Oki Data test”, the following cumulative requirements will be applied in the specific conditions of a UDRP case:

(i) the respondent must actually be offering the goods or services at issue;

(ii) the respondent must use the site to sell only the trademarked goods or services;

(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and

(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.

In the case at hand, the Panel notes that the websites associated with the disputed domain names fail the test according to at least item (iii) above. Furthermore, in light of what the Complainant asserts are extremely, and unrealistically, low prices offered in some cases, there must be some doubt as to whether the Respondent is actually offering the Complainant’s goods for sale in terms of item (i). Further and in any event, even if the Respondents were selling the Complainant’s goods at genuinely discounted prices, the Respondents are masquerading as the Complainant to do so, and such use of the disputed domain names could not be regarded as fair.

The Panel notes for completeness that it does not subscribe to the “Lost Mary” criteria which sought to revise the Oki Data test (see: Dashing Joys Ltd v. Mohammed Zafar, CAC UDRP 107605). The Panel finds the proposed revision, which relies on the panel’s stated opinion that “almost 25 years after the Oki Data decision, the public is accustomed to the Internet and is sufficiently wise to distinguish an official trademarked website from that of a reseller” to be too broad. In this Panel’s opinion, the Oki Data test has served Policy jurisprudence remarkably well for approaching a quarter of a century and there are no grounds for revision. Notably, the Panel does not consider that there has been any change of circumstances in this period regarding the general public’s ability to distinguish between official and unofficial websites which should necessarily alter the requirement for purported resellers’ websites to indicate their status clearly to that public. The reseller’s duty to provide such an indication is what must govern the matter in this Panel’s view, not any perceived level of sophistication of the Internet user, which by its nature will be highly variable. The Oki Data test survives in the latest iteration of the WIPO Overview of consensus views of panels under the Policy, namely version 3.1, and the Panel applies it here.

Panels under the Policy have found that circumstantial evidence can support a complainant’s otherwise credible claim of illegal respondent activity. Evidence that goods are offered disproportionately below market value, as presented by the Complainant here, has been found relevant in this regard (WIPO Overview 3.1, section 2.13.2).

There is no evidence that the Respondent is commonly known by the disputed domain names (according to a review of the corresponding WhoIs information). Furthermore, as the websites associated with the disputed domain names were commercial in nature before being taken down, it could not be argued that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names.

The Respondent has not replied to the Complainant’s allegations and evidence in this case and has failed to set out any alleged rights or legitimate interests which it might have claimed in the disputed domain names. Notably, the Respondent has not suggested that it is selling genuine products of the Complainant, and/or that these are properly priced. The Respondent has not suggested that it has any rights or entitlement allowing it to present itself as the Complainant. The content of the websites associated with the disputed domain names (and the composition of the disputed domain names themselves) suggests that the Respondent is impersonating the Complainant. The Respondent has not shown any way in which it might be alerting consumers to the fact that it is not the Complainant. There are no submissions or evidence on the record that might serve to rebut the Complainant’s case on this topic, as outlined above. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.

The Panel turns to the question of whether the disputed domain names have been registered and are being used in bad faith. The appropriate date for registration in bad faith is the date of registration of the disputed domain names (see WIPO Overview 3.1, section 3.9). By those dates, the Complainant’s trademark registrations were long-established. Furthermore, the Complainant has registered a trademark specifically in the territory where the Respondent is allegedly based that pre-dates the Respondent’s registration of the disputed domain names by a substantial period. The Respondent deliberately references the Complainant’s mark on the websites associated with the disputed domain names in a manner which impersonates the Complainant and presents each website as the Complainant’s official website.

No effort is taken by the Respondent to draw a clear line between itself and the Complainant. Notably, the Complainant’s trademark is reproduced prominently at the top of each of the websites associated with the disputed domain names without there being any clear explanation of the lack of relationship between the Parties. The composition of the disputed domain names implies such a relationship as the Complainant’s mark is recognizable in each. In addition to these points, the apparently unrealistic and extreme discounting of the Complainant’s products in some cases tends to support an inference that potentially illegal or otherwise abusive activity may be connected with one or more of the websites associated with the disputed domain names, and this calls for an explanation from the Respondent that is notably absent here.

The Panel finds it to be reasonable, in these circumstances and in the absence of any countervailing submissions or evidence, to infer that the disputed domain names were registered by the Respondent with an awareness of the Complainant and its rights, and with an intent to target these unfairly. In terms of paragraph 4(b)(iv) of the Policy, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of such websites.

Consequently, the Panel considers that the Complainant has made out a sufficient case of registration and use of each of the disputed domain names in bad faith within the meaning of the Policy. The Respondent has not filed a Response in this case and therefore has not sought to address the Complainant’s allegations of bad faith registration and use or to address in any way the evidence that the Complainant has brought forward. The Respondent has not offered any explanation that might have suggested that its actions regarding the disputed domain names were in good faith, and the Panel has been unable to identify any conceivable good faith explanation which the Respondent might have given in this case. In all of these circumstances, the Panel finds that the disputed domain names have been registered and are being used in bad faith.