Chocoladefabriken Lindt & Sprüngli AG (“Complainant”), just lost its attempt to grab the domain name excellencechocolate.com based on a trademark on the term EXCELLENCE.
Although the panelist James A. Carmody, Esq. found that “Complainant rights in EXCELLENCE are suspect”, “that the underlying the mark is a clearly generic phrase neither coined by nor inherently associated with Complainant that the domain holder has been selling chocolate under the EXCELLENCE CHOCOLATE mark since 1989” and the domain holder had not acted in bad faith, he refused to find Reverse Domain Name Hijacking.
Here are the highlights:
Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).
Respondent has sold chocolate under the EXCELLENCE CHOCOLATE mark for a number of years—since 1989.
The Panel finds that Respondent has rights and legitimate interests in the domain name because it is commonly known by the disputed domain name through its chocolate selling business based in Montreal.
Excellencechocolate.com was registered in 2013 for purposes of marketing Respondent’s brand, and Respondent’s use of the domain name to promote its Belgian-style chocolate business is legitimate and bona fide within the meaning of Policy ¶ 4(c)(i).
Furthermore, the phrase underlying the domain name is essentially a descriptive term that cannot be monopolized by Complainant.
Respondent has established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).
Complainant has failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii).
Clearly use of “excellence chocolate” as Respondent’s brand since 1989 defeat’s Complainant’s claim of bad faith registration of the domain name at issue in 2013.
Accordingly, since Respondent has rights or legitimate interests in the
Although the Panel feels that this case was not prudently brought and is without merit, there are arguably competing rights in the same essentially generic mark, and Complainant’s conduct does not seem to rise to reverse domain name hijacking.
