Decision for dispute CAC-UDRP-108990

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 has demonstrated ownership of rights in the trademark GHIRARDELLI for the purposes of standing to file a UDRP complaint.

The Complainant is the owner of numerous trademark registrations for GHIRARDELLI, including the following, as per trademark registration certificates submitted as annexes to the Complaint:

- United States trademark registration No. 205776 for GHIRARDELLI (word mark), filed on May 21, 1925, and registered on November 17, 1925, in international class 30;

- United States trademark registration No. 1645206 for GHIRARDELLI (word mark), filed on May 21, 1990, and registered on May 21, 1991, in international classes 16, 18, 21 and 25;

- United States trademark registration No. 3508893 for GHIRARDELLI (word mark), filed on July 27, 2007, and registered on September 30, 2008, in international classes 6, 14, 18, 21, 25 and 25;  

- European Union trademark registration No. 003716453 for GHIRARDELLI (word mark), filed on March 17, 2004, and registered on July 27, 2005, in classes 30, 35, 42 and 43;

- International trademark registration No. 826074 for GHIRARDELLI (word mark), registered on March 30, 2004, in classes 30, 35 and 43;

- International trademark registration No. 936941 for GHIRARDELLI (word mark), registered on July 27, 2027, in classes 06, 14, 16, 18, 21, 25, 28 and 41.

The Complainant was founded in 1845 and is a well-known Swiss chocolate manufacturer and the holding company of the Lindt & Sprüngli Group, a global leader in the premium chocolate category. The Group produces high-quality chocolates at 12 production sites in Europe and the United States, with products sold through 41 subsidiaries and branch offices, around 650 of its own stores, and a global network of approximately 100 distributors. The Group reported sales of CHF 5.92 billion in 2025.

Over the years the Complainant has expanded its brand portfolio abroad and acquired chocolate businesses including Hofbauer and Kufferle, in 1994, Caffarel, in 1997, Ghirardelli, in 1998, and Russel Stover, in 2014.

The Complainant is the owner of the domain name <ghirardelli.com>, registered on June 24, 1998, and used by the Complainant to promote GHIRARDELLI chocolate products.

The disputed domain name <ghirardellilife.com> was registered on August 15, 2026, and currently does not resolve to an active website. However, according to the evidence submitted by the Complainant – which has not been contested by the Respondent, on September 9, 2026, the disputed domain name resolved to a website publishing the Complainant’s figurative mark and product visuals and offering purported GHIRARDELLI products for sale at discounted prices, requesting users’ personal and financial information to complete the orders, without displaying any disclaimer of non-affiliation with the Complainant.

COMPLAINANT

The Complainant contends that the disputed domain name <ghirardeIIiIife.com> is confusingly similar to its registered trademark GHIRARDELLI as it reproduces the trademark in its entirety with the mere addition of the generic term “life” and the generic Top-Level Domain (“gTLD”) “com”.

The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name because: i) the Respondent is not connected to nor affiliated with the Complainant and has not received license or consent to use the GHIRARDELLI mark in any way; ii) the Respondent does not own any trademark rights in, nor is it commonly known by the disputed domain name; iii) the disputed domain name has not been used in connection with a bona fide offering of goods or services since it resolved to a website that impersonated the Complainant by presenting itself as an official GHIRARDELLI online store, using the Complainant’s trademarks and failing to accurately and prominently disclose the absence of any relationship with the Complainant; v) the current redirection of the disputed domain name to an inactive website, which is the result of the Complainant’s take down activities, does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use, also considering the nature and composition of the disputed domain name create a high risk of implied affiliation and do not constitute fair use.

The Complainant claims that the Respondent registered the disputed domain name in bad faith since: i) the Complainant has accrued substantial goodwill and recognition in the GHIRARDELLI mark, which has been used to distinguish its chocolate offerings for over a century and has been acquired by the Complainant in 1998 and has since formed part of the Complainant’s global portfolio of premium chocolate brands; ii) the renown of the Complainant’s mark has been recognized in prior UDRP decisions; iii) the Complainant’s trademark registrations for GHIRARDELLI are readily identifiable in publicly accessible trademark databases and basic Google and Baidu searches for the Complainant’s mark return top results clearly relating to the Complainant’s mark; iv) the composition of the disputed domain name reinforces the inference that the Respondent deliberately targeted the Complainant's GHIRARDELLI trademark at the time of registration.

The Complainant also states that the Respondent used the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark. The Complainant emphasized that the website's overall presentation, branding, and functionality were plainly designed to mislead internet users into believing that they were interacting with an official or authorized GHIRARDELLI retail platform.

With reference to the fact that the disputed domain name does not currently resolve to an active website, the Complainant submits that the redirection was deactivated following a takedown attempt, and states that the Respondent’s prior use of the disputed domain name for impersonation purposes, the distinctiveness and reputation of the GHIRARDELLI mark, the composition of the disputed domain name and the absence of any plausible legitimate use by any third party not authorized by the Complainant, support a finding of bad faith notwithstanding the present lack of active use.

RESPONDENT

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.

1. The Complainant has provided evidence of ownership of valid trademark registrations for GHIRARDELLI.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark as it reproduces the trademark in its entirety with the sole addition of the dictionary term “life” and the gTLD “com”. As stated in prior decisions rendered under the UDRP, where relevant trademark is recognizable within the disputed domain name, the addition of other terms and of the gTLD is not sufficient to prevent a finding of confusing similarity under the first element. 

Therefore, the Panel finds that the Complainant has demonstrated that the disputed domain name is confusingly similar to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.

2. With reference to the Respondent’s rights or legitimate interests in the disputed domain name, the Panel finds that the Complainant has made a prima facie case and that the Respondent, by not submitting a Response, has failed to provide any element from which a Respondent’s right or legitimate interest in the disputed domain name could be inferred.

The Panel notes that, based on the records, the Respondent has not been authorized, licensed or otherwise permitted by the Complainant to use its trademark GHIRARDELLI. Moreover, there is no evidence that the Respondent might be commonly known by the disputed domain name or a name corresponding to the disputed domain name.

As highlighted above, the disputed domain name is currently not pointing to an active website but previously resolved to a website reproducing the Complainant's GHIRARDELLI figurative mark and product visuals and offering purported GHIRARDELLI-branded products at discounted prices, without providing any disclaimer as to the lack of affiliation with the Complainant. The Panel finds that the Respondent’s use does not meet the conditions set forth in the decision Oki Data Americas, Inc. v. ASD, Inc. WIPO Case No. D2001–0903 (the so-called “Oki data test”) for a reseller to succeed in claiming to be making a bona fide offering of goods or services under a disputed domain name encompassing the complainant’s trademark. Moreover, the use of the disputed domain name described above does not amount to a legitimate non-commercial or fair use.

The Panel finds the disputed domain name not only creates confusion and association with the Complainant, but has not been used in connection with a bona fide offering of goods or services or legitimate non-commercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark.

Therefore, the Panel finds that the Complainant has demonstrated that the Respondent has no rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy.

3. As to bad faith at the time of registration, the Panel finds that, in light of the prior registration and use of the trademark GHIRARDELLI in connection with the Complainant’s premium chocolate products, the promotion of the GHIRARDELLI mark online through the website “www.ghirardelli.com” and the explicit reference to the Complainant’s trademark and products made on the website published at the disputed domain name, the Respondent was very likely aware of the Complainant’s trademark at the time of the registration of the disputed domain name.

In view of the use of the disputed domain name to redirect users to a website publishing the Complainant’s trademark and product visuals and offering purported GHIRARDELLI products for sale without providing any disclaimer of non-affiliation with the Complainant, the Panel finds that the Respondent intentionally attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark GHIRARDELLI as to the source, sponsorship, affiliation or endorsement of its website and the products offered therein, according to paragraph 4(b)(iv) of the Policy.  

The disputed domain name does not currently resolve to an active website as its redirection was deactivated as a result of the Complainant’s take down activities. As established in a number of prior UDRP cases, the concept of “bad faith use” in paragraph 4(b) of the Policy includes not only positive action but also passive holding. In the present case, in light of i) the distinctiveness and reputation of the Complainant’s trademark; ii) the prior use of the disputed domain name made and ii) the Respondent’s failure to submit a Response to provide any evidence of actual or contemplated good-faith use of the disputed domain name, the Panel finds that the current passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy.

Therefore, the Panel finds that the Complainant has also demonstrated that the Respondent registered and is using the disputed domain name in bad faith according to paragraph 4(a)(iii) of the Policy.