Decision for dispute CAC-UDRP-108899

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

According to the evidence submitted by Complainant, Complainant is the owner of multiple registrations of the trademark RUSSELL STOVER including the following: 
- the  trademark RUSSELL STOVER registered with the United States Patent and Trademark Office, serial number 7217551 and registration date 16 October 1962;
- European Union trademark RUSSELL STOVER no. 004342077 registered on 28 April 2006;
- International trademark RUSSELL STOVER no. 1243266 registered on 28 January 2015.

According to the information provided the disputed domain name <russellstovershopus.com>  was registered on 25 June 2026 and the disputed domain name <russellstoverstoreus.com>  was registered on 24 July 2026.  

At the time of the decision the disputed domain names do not resolve to an active website. The disputed domain names previously resolved to websites imitating the website of Complainant and promoting and offering for sale chocolate products under the mark RUSSELL STOVER at discounted prices. 

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

Complainant's group is a leading manufacturer of chocolates. In 2014, it acquired Russell Stover Chocolates, LLC, a manufacturer of chocolates based in the USA. The business of that company was founded in Denver, Colorado, in 1923, and adopted the name "Russell Stover Candies" in 1943. Today, Russell Stover chocolates are produced in the United States at three factories and are available to purchase in 13 retail locations. In 2024, the Russell Stover division of Complainant generated sales of USD 377 million.

Complainant submits that it satisfies the identity/confusing similarity requirement of the first UDRP element. The disputed domain names each incorporate Complainant’s RUSSELL STOVER trademark in its entirety, followed only by the commercial terms ‘shop’ or ‘store’ and the geographic abbreviation ‘us’. Complainant’s RUSSELL STOVER mark is therefore clearly recognizable within the disputed domain names for purposes of the first element test. The addition of descriptive, commercial, or geographic terms, whether individually or in combination, does not prevent a finding of confusing similarity where, as here, the relevant trademark remains recognizable within the disputed domain names.  

According to Complainant, Respondent has no rights or legitimate interest in the disputed domain name. Complainant asserts that Respondent is not connected to nor affiliated with Complainant and has not received a license or consent to use the RUSSELL STOVER mark in any way. The disputed domain names have been used to resolve to websites that impersonated Complainant by presenting themselves as official RUSSELL STOVER online stores. The websites prominently displayed Complainant’s RUSSELL STOVER mark and logo and displayed RUSSELL STOVER-branded products offered at highly discounted prices. Users were encouraged to browse products, add them to a shopping cart, and proceed to a checkout screen requesting personal and financial information, including full name, postal address, telephone number, email address, and payment card details. The websites used highly similar color schemes, layouts, navigational structures, product listings, product imagery, and payment-related references, all designed to create the false impression that they were legitimate online retail platforms operated by, affiliated with, or authorized by Complainant. Such impersonation and passing-off conduct, which exposed users to a clear risk of phishing or fraud, can never confer rights or legitimate interests under the Policy.

 
According to Complainant the disputed domain names were registered and are being used in bad faith.
Complainant submits that the composition of the disputed domain names themselves reinforces the inference that Respondent deliberately targeted Complainant’s RUSSELL STOVER trademark at the time of registration. Each of the disputed domain names incorporates Complainant’s distinctive and well-known RUSSELL STOVER mark in full, followed only by the commercial term ‘shop’ or ‘store’ and the geographic abbreviation ‘us’. The terms ‘shop’ and ‘store’ directly evoke the online sale of RUSSELL STOVER products.
The websites to which the disputed domain names resolved impersonated Complainant. Their overall presentation, branding, and functionality were plainly designed to mislead Internet users into believing that they were interacting with official or authorized RUSSELL STOVER retail platforms, thereby attracting users for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the websites

Respondent
No administratively compliant Response has been filed.

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 Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

Complainant has, to the satisfaction of the Panel, shown 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).

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 by the undisputed evidence presented by Complainant that the disputed domain names are controlled by the same individual or entity and that consolidation of  Complainant's complaints in relation to them would be fair and equitable. Accordingly, the Panel grants Complainant's request for consolidation.

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.

In the opinion of the Panel the disputed domain names are confusingly similar to Complainant's RUSSELL STOVER trademark. Many UDRP decisions have found that a disputed domain name is identical or confusingly similar to a complainant’s trademark where the relevant trademark is recognizable within the disputed domain name. Complainant has established that it is the owner of multiple trademark registrations for RUSSELL STOVER. The disputed domain names incorporate the entirety of the  trademark as its distinctive element. The addition of the terms “store”, “shop” and “us” is insufficient to avoid a finding of confusing similarity. The Top-Level Domain ( “gTLD”) “.com” in the disputed domain name may be disregarded, as it is a standard registration requirement.
The Panel notes that Complainant’s registration of its trademarks predates the creation date of the disputed domain names. 

In the opinion of the Panel Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names. Complainant has not licensed or otherwise permitted Respondent to use its trademark or to register the disputed domain names incorporating its mark. Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark of Complainant. Respondent is not commonly known by the disputed domain names nor has it acquired trademark rights. Complainant has no relationship with Respondent. In addition Complainant has demonstrated that the disputed domain names resolved to websites imitating the website of Complainant and  marketing RUSSELL STOVER branded chocolate products. The Panel notes that Respondent cannot use the so-called Oki Data exception established in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, as a reseller since the websites under the disputed domain names do not accurately and prominently disclose the (lack of) Respondent’s relationship with Complainant as the trademark holder.       
Respondent did not submit any response. Under these circumstances, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.  

The Panel finds that the disputed domain names have been registered and have been used in bad faith. Complainant has rights in the RUSSELL STOVER trademarks. Respondent knew or should have known that the disputed domain names include Complainant’s mark.
The Panel also notes the undisputed submission of Complainant, supported by evidence, that the disputed domain names resolved to websites which imitates the website of Complainant, and incorporates Complainant’s trademark in its entirety and sells RUSSELL STOVER branded products, which indicates that Respondent registered and uses the disputed domain names with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the trademark of Complainant as to the source, sponsorship, affiliation, or endorsement of its website or location or of a service on its website or location, which constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy. The fact that the Domain Name does not currently resolve to an active website does not prevent a finding of bad faith in view of the so-called doctrine of passive holding.