Decision for dispute CAC-UDRP-109012

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 is the registered owner of many trademarks for GHIRARDELLI term, covering numerous jurisdictions around the world, e.g. European Union trademark registration no. 003716453 Ghirardelli (word), registered on July 27, 2005 for goods and services in classes 30, 35, 42 and 43.

It results from the Complainant’s undisputed allegations that is a well-known Swiss chocolate manufacturer and the holding company of the Lindt & Sprüngli Group, a global leader in the premium chocolate category. Over the years, the Complainant has expanded its brand portfolio abroad and acquired chocolate businesses including Hofbauer and Küfferle (1994), Caffarel (1997), Ghirardelli (1998), and Russell Stover (2014). The Ghirardelli Chocolate Company (‘Ghirardelli’) became part of the Lindt & Sprüngli Group in 1998. Founded in 1852, Ghirardelli is one of the oldest chocolate companies in the United States and is headquartered in California.

It owns and uses the domain name < ghirardelli.com > (registered on June 24, 1998) for its official website, advertising and selling its confectionery products.

The disputed domain name was registered on August 22, 2026. Furthermore, the undisputed evidence provided by the Complainant proves that the disputed domain name resolves to a website displaying without authorization and prominently the Complainant’s mark and logo and purportedly offering products under the Complainant’s trademark. The section “About us” provides amongst others the following: “Our Story: The Ghirardelli Chocolate Company is an American confectioner, wholly owned by Swiss confectioner Lindt & Sprüngli (..) Our Values (..) Our Products (..) Our historic factory in San Francisco has been transformed into Ghirardelli Square (..) Get In Touch: Ghirardelli Chocolate Company” including the Complainant’s affiliate registered address in California.

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.

1. Pursuant to paragraph 4(a)(i) of the Policy, the complainant must establish rights in a trademark or service mark, and that the disputed domain name is identical or confusingly similar to a trademark in which the complainant has rights.

It results from the evidence provided, that the Complainant is the registered owner of GHIRARDELLI trademarks.

Prior UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.1”) at section 1.7. This Panel shares this view and notes that the Complainant’s registered trademark GHIRARDELLI is fully included in the disputed domain name.

Although the addition of other terms (here “official”) may bear on assessment of the second and third elements, the Panel finds the addition of such a term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy.  WIPO Overview 3.1, section 1.8.

Finally, the generic Top-Level Domain (“gTLD”) “.com” of the disputed domain name is typically disregarded under the first element confusing similarity test (see WIPO Overview 3.1 at section 1.11.1).

In the light of the above, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

2. Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to the disputed domain name.

In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name.

According to the Complaint, which has remained unchallenged, the Complainant has no relationship in any way with the Respondent and did, in particular, not authorize the Respondent’s use of the Complainant’s trademark, e.g. by registering the disputed domain name, comprising said trademark entirely plus the term “official”, tending to suggest sponsorship or endorsement by the Complainant. This is also confirmed by the content of the website to which the disputed domain name resolves, allegedly advertising and offering for sale products under the Complainant’s mark and reproducing without authorization the Complainant’s trademark and logo and presenting itself as the Complainant’s affiliate, the Ghirardelli Chocolate Company.

The composition of the disputed domain name enhances the false impression that the disputed domain name is somehow officially related to the Complainant and promotes the Complainant’s business.  Such composition of the disputed domain name cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner, as it is in the case at issue.  See section 2.5.1 of the WIPO Overview 3.1.  

Furthermore, the Panel notes that there is no evidence showing that the Respondent might be commonly known by the disputed domain name in the sense of paragraph 4(c)(ii) of the Policy.

It is acknowledged that once the Panel finds a prima facie case is made by a complainant, the burden of production under the second element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name (see WIPO Overview 3.1 at section 2.1). Since the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds, in the circumstances of this case, that the Respondent has no rights or legitimate interests in the disputed domain name.

The Panel finds that the Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy.

3. According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.

One of these circumstances is that the Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location (paragraph 4(b)(iv) of the Policy).

In the present case, the Panel notes that it results from the Complainant’s documented allegations that the disputed domain name resolves to a website prominently displaying the Complainant’s trademark and logo, and purportedly advertising and offering for sale the Complainant’s products and presenting itself as the Complainant’s affiliate the Ghirardelli Chocolate Company.  For the Panel, it is therefore evident that the Respondent positively knew the Complainant’s mark.  Consequently, and in the absence of any evidence to the contrary, the Panel is convinced that the Respondent also knew that the disputed domain name included the Complainant’s trademark when it registered the disputed domain name.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith.  WIPO Overview 3.1, section 3.2.1.

In this regard, the further circumstances surrounding the disputed domain name’s registration and use confirm the Panel’s findings that the Respondent has registered and is using the disputed domain name in bad faith:

(i) the nature of the disputed domain name (incorporating the Complainant’s mark plus the addition of the term “official”);

(ii) the content of the website to which the disputed domain name directs, prominently displaying the Complainant’s trademark, logo, and purportedly advertising and offering for sale the Complainant’s products, and presenting itself as the Complainant’s affiliate the Ghirardelli Chocolate Company.

(iii) absence of rights or legitimate interests coupled with no response to the Respondent’s choice of the disputed domain name.

The Panel finds that the Complainant has established the third element of the Policy.