Decision for dispute CAC-UDRP-109014

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 owns several trademark registrations for the sign GHIRARDELLI, including:

• United States trademark no. 205776 for GHIRARDELLI, registered on 17 November 1925 in Class 30;
• United States trademark no. 1645206 for GHIRARDELLI, registered on 21 May 1991 in Classes 16, 18, 21, 25, 30 and 42;
• United States trademark no. 3508893 for GHIRARDELLI, registered on 30 September 2008 in Classes 6, 16, 18, 21, 25 and 28;
• European Union trademark no. 003716453 for GHIRARDELLI, registered on 27 July 2005 in Classes 30, 35, 42 and 43;
• International trademark no. 826074 for GHIRARDELLI, registered on 30 March 2004 in Classes 30, 35 and 43;
• International trademark no. 936941 for GHIRARDELLI, registered on 27 July 2007 in Classes 6, 14, 16, 18, 21, 25, 28 and 41;
• Canadian trademark no. TMA378615 for GHIRARDELLI, registered on 18 January 1991 in Class 30; and
• Canadian trademark no. TMA763505 for GHIRARDELLI, registered on 8 April 2010 in Classes 16, 18, 21, 25, 30, 35 and 43

The Complainant also owns the domain name <ghirardelli.com>, registered since 24 June 1998, which is used for the official website dedicated to its GHIRARDELLI brand.

The above-mentioned rights are hereinafter collectively referred to as the GHIRARDELLI Trademark.

The Complainant, Chocoladefabriken Lindt & Sprüngli AG, is a well-known Swiss chocolate manufacturer founded in 1845. The Complainant is a leading producer of premium chocolate, with an international presence and a portfolio of chocolate brands. In 1998, the Complainant's group acquired the Ghirardelli Chocolate Company, an American chocolate manufacturer established in 1852. The GHIRARDELLI brand is widely used in connection with chocolate and confectionery products, particularly in the United States.

The Respondent is Wesley Neal, an individual residing in Oak Hill, West Virginia, United States.

The disputed domain name <ghirardelliishop.com> was registered on 28 August 2026 with Dynadot Inc.

The disputed domain name initially resolved to a website displaying the GHIRARDELLI trademark and logo and presenting an online shop offering GHIRARDELLI chocolate products for sale. The website featured product images, prices, discounts and shopping cart functionality. It also displayed a copyright notice dated 2026 and footer elements resembling those of the Complainant's official website.

The website associated with the disputed domain name is currently inaccessible, following a takedown attempt by the Complainant.

The Complainant contends that the requirements of the Policy have been met and that the disputed domain name 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 name is 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 name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is 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.

Under Paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements to succeed in the administrative proceeding:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used by the Respondent in bad faith.

I. THE COMPLAINANT’S RIGHTS AND THE CONFUSING SIMILARITY OF THE DISPUTED DOMAIN NAME TO THE COMPLAINANT'S MARK

The Complainant has established that it has rights in the GHIRARDELLI Trademark.

The disputed domain name consists of the GHIRARDELLI Trademark, with the addition of the letter "i" immediately after the trademark, followed by the term "shop" and the Top-Level Domain (TLD) ".com".

In UDRP disputes, the test for identity or confusing similarity involves a straightforward, reasoned comparison between the complainant’s trademark and the disputed domain name. This typically entails a side-by-side evaluation of the domain name and the textual elements of the relevant trademark to determine whether the mark is recognizable within the domain name. When a domain name incorporates a trademark in its entirety, or at least a dominant feature of it remains recognizable, the domain name is generally deemed confusingly similar to the mark for the purposes of UDRP standing. The addition of other terms, whether descriptive, geographical or otherwise, does not prevent a finding of confusing similarity under this first element. Similarly, minor misspellings of a trademark do not prevent a finding of confusing similarity where the trademark remains recognizable. The TLD is usually disregarded in determining identity or confusing similarity, as it is simply a technical requirement of registration.

In the present case, the GHIRARDELLI Trademark remains clearly recognizable within the disputed domain name. The additional letter "i" may be regarded either as a minor misspelling of the trademark or, together with the term "shop", as forming the expression "ishop", suggesting an online shop. Neither interpretation prevents a finding of confusing similarity with the Complainant's GHIRARDELLI Trademark.

Accordingly, the Panel finds that the Complainant has proven the first element of Paragraph 4(a) of the Policy and that the disputed domain name is confusingly similar to the Complainant's GHIRARDELLI Trademark.

II. THE RESPONDENT'S LACK OF RIGHTS OR LEGITIMATE INTERESTS IN RESPECT OF THE DISPUTED DOMAIN NAME

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 disputed domain name. If the 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 disputed domain name.

The Complainant contends that it has no relationship whatsoever with the Respondent. The Respondent has never received any authorization from the Complainant, express or implied, to use the GHIRARDELLI Trademark or to register and use the disputed domain name.

The Respondent has been identified as Wesley Neal, an individual residing in the United States. There is no evidence that the Respondent, as an individual, business or other organization, has been commonly known by the disputed domain name or has acquired any rights in a trademark or trade name corresponding to the disputed domain name.

UDRP panels have found that domain names identical or confusingly similar to a complainant's trademark may carry a risk of implied affiliation. In the present case, the combination of the GHIRARDELLI Trademark with the term "shop", which suggests a commercial outlet for the Complainant's products, reinforces the impression of an affiliation with or endorsement by the Complainant.

Furthermore, the disputed domain name was previously used for a website presenting itself as an online shop offering GHIRARDELLI chocolate products for sale. The website prominently displayed the GHIRARDELLI Trademark and logo, featured product images, prices, discounts and shopping cart functionality, and reproduced elements resembling those of the Complainant's official website. The website did not disclose the absence of any relationship with the Complainant.

The Complainant also raises concerns that the website may have been used for phishing purposes, particularly by soliciting customers' personal and payment information. Although the evidence does not establish that such information was actually collected or misused, the website's misleading presentation as an official GHIRARDELLI online shop cannot constitute a bona fide offering of goods or services under Paragraph 4(c)(i) of the Policy or legitimate noncommercial or fair use under Paragraph 4(c)(iii) of the Policy.

The subsequent inaccessibility of the website, following a takedown attempt by the Complainant, does not alter this assessment.

The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. In the absence of evidence from the Respondent rebutting that case, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that the Complainant has satisfied the second requirement of Paragraph 4(a) of the Policy.

III. THE REGISTRATION AND THE USE OF THE DISPUTED DOMAIN NAME IN BAD FAITH

Under Paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith.

The Complainant owns the well-established and distinctive GHIRARDELLI Trademark, which has been extensively used and enjoys considerable recognition, particularly in the United States, where the Respondent resides and where the trademark has been registered since 1925, long before the registration of the disputed domain name on 28 August 2026. The reputation of the GHIRARDELLI Trademark has also been recognized in previous UDRP decisions (see, inter alia, CAC Case No. 107226).

UDRP panels have consistently found that the registration of a domain name identical or confusingly similar to a famous or widely known trademark by an unaffiliated entity can, in appropriate circumstances, create a presumption of bad faith.

In the present case, the disputed domain name incorporates the GHIRARDELLI Trademark in its entirety, with the addition of the letter "i" and the term "shop". Given the distinctiveness and reputation of the Complainant's trademark, the composition of the disputed domain name and its subsequent use for a website displaying the Complainant's trademark and offering GHIRARDELLI products for sale, the Panel finds that the Respondent was aware of the Complainant and its trademark at the time of registration.

The Panel therefore finds that the Respondent deliberately selected the disputed domain name to take advantage of the reputation of the GHIRARDELLI Trademark and to create a misleading impression of an affiliation with the Complainant.

As regards the use of the disputed domain name, the evidence submitted by the Complainant demonstrates that the disputed domain name previously resolved to a commercial website presenting itself as an official GHIRARDELLI online shop. The website prominently displayed the GHIRARDELLI Trademark and logo, offered chocolate products at discounted prices and reproduced elements resembling those of the Complainant's official website, without disclosing the absence of any affiliation with the Complainant.

Moreover, the website included shopping cart and checkout functionality through which customers were requested to provide personal and payment information. Although the evidence does not establish that such information was actually collected or misused, these circumstances further reinforce the misleading nature of the website and the potential risk to Internet users.

The Respondent's use of the disputed domain name was intended to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant's GHIRARDELLI Trademark as to the source, sponsorship, affiliation or endorsement of the website and the products purportedly offered through it. Such conduct constitutes evidence of bad faith use under Paragraph 4(b)(iv) of the Policy (see CAC Case No. 108648).

The fact that the website associated with the disputed domain name subsequently became inaccessible, following a takedown attempt by the Complainant, does not alter the Panel's findings. The evidence of the Respondent's previous use of the disputed domain name is sufficient to establish bad faith under Paragraph 4(b)(iv) of the Policy, notwithstanding its present inaccessibility.

In view of the foregoing circumstances, the Panel finds that the disputed domain name was registered and is being used in bad faith and that the Complainant has therefore satisfied the third requirement of Paragraph 4(a) of the Policy.