Decision for dispute CAC-UDRP-108900

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 has submitted evidence, which the Panel accepts, showing that it is the registered owner of the trademarks bearing “LINDT” and “GHIRARDELLI”, inter alia, the following:

• German trademark “LINDT” n° 91037, registered on September 27, 1906;
• European Union trademark “LINDT” n° 000134007, registered on September 7, 1998;

• United States trademark “GHIRARDELLI” n° 205776, registered on November 17, 1925,
• European Union trademark “GHIRARDELLI” n° 003716453, registered on July 27, 2005.

Moreover, the Complainant is also the owner of the domain names bearing the sign “LINDT” and “GHIRARDELLI” such as the domain names <lindt.com> since 1998 and <ghirardelli.com> (registered on June 24, 1998).

The Complainant is a global premium chocolate and confectionery company founded in 1845 in Switzerland. The Complainant produces a catalogue of roughly 2,500 items – sold under a number of well-known brands, including for instance LINDT, GHIRARDELLI or RUSSELL STOVER - through a network of 12 manufacturing sites located in Europe and the United States. Its international footprint includes 41 subsidiaries and branch operations, more than 600 branded retail outlets, and partnerships with over 100 independent distributors serving markets around the world. Employing in excess of 15,000 people, the Complainant achieved revenues of CHF 5.92 billion and reported operating earnings of CHF 971 million in 2025. As part of its international expansion strategy, the Complainant acquired Ghirardelli Chocolate Company in 1998. Established in 1852 and headquartered in San Francisco, California, Ghirardelli is recognized as one of the longest-standing chocolate producers in the United States. Its products reach consumers through a combination of company-owned stores, retail distribution channels, and wholesale partnerships. For the 2024 fiscal year, Ghirardelli reported sales totalling USD 888 million.

The Complainant holds many trademark registrations including “LINDT” phrase going back to 1906 and “GHIRARDELLI” since at least 1925, and the Complainant also holds the domain names bearing “LINDT” and “GHIRARDELLI”, such as <lindt.com> and <ghirardelli.com>.

The Respondent registered the disputed domain names <lindtusaoutlet.com> on July 3, 2026, <ghirardelligiftshop.com> on June 25, 2026, <ghirardellionline.com> on July 1, 2026, <ghirardelliussale.com> on June 2, 2026, and <ghirardelliusstore.com> on July 4, 2026. The disputed domain names are currently inactive.

COMPLAINANT:

1. THE DISPUTED DOMAIN NAMES ARE CONFUSINGLY SIMILAR

The disputed domain names are confusingly similar to the Complainant’s formerly registered distinctive trademarks, as they bear the Complainant’s “LINDT” and “GHIRARDELLI” trademarks as a whole and plainly identifiable with the addition of the descriptive terms, which would not prevent a finding of confusing similarity.

The Complainant also claims that the gTLD “.com” has no material relevance, is merely technical and will be disregarded, so the domain names remain confusingly similar despite its inclusion.

2. NO RIGHTS OR LEGITIMATE INTERESTS IN RESPECT OF THE DISPUTED DOMAIN NAMES

The Complainant states that the Respondent has not been granted any authorization, license, consent, or other form of permission by the Complainant to use the LINDT and GHIRARDELLI marks in connection with the registration or use of the disputed domain names.

The Respondent does not appear to own any trademark rights in “ghirardelligiftshop.com”, “ghirardellionline.com”, “ghirardelliussale.com”, “ghirardelliusstore.com”, “lindtusaoutlet.com”, “ghirardelligiftshop”, “ghirardellionline”, “ghirardelliussale”, “ghirardelliusstore”, and “lindtusaoutlet”. In addition, it is claimed that there is no evidence showing the Respondent has ever been commonly known by any of the aforementioned terms.

Moreover, the Complainant asserts that the disputed domain names do not appear to have any ordinary or recognized meaning in the English language.

It was further claimed by the Complainant that while the disputed domain names are currently inactive and do not resolve to operational websites, but this occurred only after the Complainant submitted takedown requests. Before their suspension, the disputed domain names are claimed to have directed users to websites that misleadingly suggested an affiliation, endorsement, authorization, or other connection with the Complainant. Furthermore, it was claimed that the websites invited users to submit personal and financial information during the purchasing process, including their names, postal addresses, e-mail addresses, telephone numbers, and credit card details.

In any case, the Complainant referred to previous panel decision supporting that the passive holding of the domain names does not serve to confer a finding of rights or legitimate interests.

The Complainant argues that the Respondent is not using the disputed domain names in connection with bona fide offering of goods or services or a legitimate non-commercial or fair use.

3. THE DISPUTED DOMAIN NAMES WERE REGISTERED AND ARE USED IN BAD FAITH

The Complainant claims that Complainant’s “LINDT” and “GHIRARDELLI” trademarks significantly predate the disputed domain names. The Complainant states that these trademarks are well-known trademarks. The Complainant further submits that both the "LINDT" and "GHIRARDELLI" marks have acquired a substantial degree of fame, goodwill, and consumer recognition internationally, which has been acknowledged in a number of prior UDRP decisions.

The Complainant asserts that it is inconceivable for the Respondent to be unaware of the existence of the Complainant when he registered the disputed domain names. The fact that the Respondent registered the disputed domain names while knowing about the trademarks of the Complainant constitutes bad faith in registering the disputed domain names. The Complainant claims that the overall composition of the disputed domain names is inherently deceptive and likely to lead Internet users to believe that the corresponding websites are owned, authorized, sponsored, endorsed, or otherwise affiliated with the Complainant, when no such relationship exists, which was reinforced by the manner in which the disputed domain names were used. Each of them resolved to websites that purported to be connected with, authorized by, or operated on behalf of the Complainant, while simultaneously exhibiting features commonly associated with phishing or other fraudulent schemes, including the collection of users’ personal and financial information. They also displayed images of products bearing the Complainant’s "LINDT" and "GHIRARDELLI" trademarks and promoted the purchase of such products through various commercial offers at discounted prices. In the Complainant’s view, these circumstances leave no plausible basis for concluding that the disputed domain names were registered in good faith. On the contrary, taken as a whole, the evidence demonstrates that the Respondent registered the disputed domain names with the Complainant and its "LINDT" and "GHIRARDELLI" trademarks specifically in mind.

The Complainant also points out that, the websites’ overall look and feel, or the “About Us” sections of the websites at <ghirardelliussale.com> and <lindtusaoutlet.com>, clearly imply a connection with the Complainant. The repeated and prominent use of the “LINDT” and “GHIRARDELLI” marks were likely to lead Internet users to believe that they were accessing genuine online stores operated by, or on behalf of, the Complainant. Moreover, the websites required users to provide personal information as part of the purchasing process, including names, e-mail addresses, telephone numbers, and postal addresses, thereby creating a significant risk of phishing, identity theft, or other fraudulent conduct. Such practices are claimed to have characteristic of impersonation and passing-off schemes and have consistently been regarded by previous panels as strong indicators of bad faith. The Complainant also states that the current inactive status does not prevent a bad faith finding.

Moreover, the Complainant notes that the Respondent has provided false and incomplete contact details in connection with the disputed domain names registration. In particular, no street name or building number is provided, and the stated postcode '85014' does not correspond to any location in Manila, Philippines. The provision of inaccurate or misleading registration details further supports an inference of bad faith.

Finally, the Complainant additionally observes that the Respondent has been named as a respondent in numerous prior UDRP proceedings in which panels found that the relevant domain names had been registered and used in bad faith. This is claimed to demonstrate a pattern of abusive domain name registrations according to WIPO Overview 3.1, section 3.1.2, reinforcing the conclusion that the disputed domain names were registered and are being used in bad faith.

Accordingly, the Complainant alleges that the disputed domain names were registered and are being used in bad faith.

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.

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

In this context, the Panel also notes that the burden of proof is on the Complainant to make out its case and past UDRP panels have consistently said that a Complainant must show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.

For the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:

1. the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

2. the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

3. the disputed domain names have been registered and are being used in bad faith.

The Panel will therefore deal with each of these requirements in turn.

1. IDENTICAL OR CONFUSINGLY SIMILAR

The Policy simply requires the Complainant to demonstrate that the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights. The Panel is satisfied that the Complainant is the owner of registration of “LINDT” and “GHIRARDELLI” trademarks.

The Panel finds that the disputed domain names are confusingly similar to the Complainant’s “LINDT” and “GHIRARDELLI” trademarks and the addition of the descriptive and generic terms “gift shop”, “online”, “US sale”, “US store” and “USA outlet” is not sufficient to vanish the similarity.

Moreover, the addition of the gTLD “.com” is not enough to abolish the similarity.

The Panel is of the opinion that the Internet users will easily fall into false impression that the disputed domain names are official domain names of the Complainant. The Panel recognizes the Complainant's rights and concludes that the disputed domain names are confusingly similar with the Complainant's trademark. Therefore, the Panel concludes that the requirements of paragraph 4(a)(i) of the Policy is provided.

2. NO RIGHTS OR LEGITIMATE INTERESTS

Under paragraph 4(a)(ii) of the Policy, the complainant has the burden of establishing that the respondent has no rights or legitimate interests in respect of the domain name.

It is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to the respondent of the dispute, the use or making 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 of the dispute (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent of the dispute is making a legitimate non-commercial or fair use of the domain name, without an intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Thus, if the respondent proves any of these elements or indeed anything else that shows that it has a right or legitimate interest in the domain name, the complainant will have failed to discharge its burden of proof and the complaint will fail. The burden is on the complainant to demonstrate a prima facie case that the respondent does not have rights or legitimate interests in the domain name. Once the complainant has made out a prima facie case, then the respondent may, inter alia, by showing one of the above circumstances, demonstrate rights or legitimate interests in the domain name.

The Complainant contends that the Respondent has nothing to do with the Complainant and any use of the trademarks “LINDT” and “GHIRARDELLI” has to be authorized by the Complainant but there is no such authorization. Moreover, the disputed domain names have no relation with the Respondent and the Respondent is not commonly known as the disputed domain names. Also, the Complainant submits that the disputed domain names resolved to confusingly similar websites, which does not represent a bona fide offering where such websites compete with or capitalise on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.

In the absence of a response, the Panel accepts the Complainant’s allegations as true that the Respondent has no authorization to use the Complainant’s trademarks in the disputed domain names.

Hence, as the Complainant has made out its prima facie case, and as the Respondent has not demonstrated any rights or legitimate interests as illustrated under paragraph 4(c) of the Policy, nor has the Panel found any other basis for finding any rights or legitimate interests of the Respondent in the disputed domain names, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

3. BAD FAITH

The Panel concludes that the Complainant's “LINDT” and “GHIRARDELLI” trademarks are of distinctive character and well-known. Therefore, the Panel is of the opinion that due to the earlier rights of the Complainant in the “LINDT” and “GHIRARDELLI” trademarks, the Respondent was aware of the Complainant and its trademarks at the time of registration of the disputed domain names (see e.g., Ebay Inc. v. Wangming, WIPO Case No. D2006-1107). Referring to Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226, the Panel believes that the awareness of the Complainant’s trademark at the time of the registration of the disputed domain names is to be considered an inference of bad faith registration.

Moreover, the disputed domain names are currently inactive but, in the Complaint, it was explained that it was incorporating elements of the Complainant's branding and the same products of chocolate goods. It can deceit the consumers into thinking the Respondent is affiliated with the Complainant and into buying products through or by way of the websites of the disputed domain names. The Panel considers that this may be evaluated under (iv) of paragraph 4(b), which is as follows: by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location. In any case, as previously held by various panellists many times before, the current inactive status of the disputed domain name also does not prevent the finding of bad faith.

All the circumstances of the case must be examined to determine whether the Respondent is acting in bad faith. The cumulative circumstances for an indication of bad faith include the Complainant having a well-known trademark, no proper response having been filed, and the registrant’s provision of false/incomplete address, as well as the previous deceptive uses, which all happened in this case.

Therefore, in light of the above-mentioned circumstances in the present case, the Panel finds that the disputed domain names have been registered and are being used in bad faith and that the Complainant has established the third element under paragraph 4(a)(iii) of the Policy.