Hershey Canada Inc. has successfully obtained the transfer of the domain name brookside-chocolate.com following a Uniform Domain Name Dispute Resolution Policy (UDRP) proceeding at the WIPO Arbitration and Mediation Center. The dispute, Case No. D2025-4040, involved a domain that directly paired the Complainant’s BROOKSIDE trademark with its primary product category, creating a high risk of consumer confusion and traffic diversion. The Panelist ordered the transfer of the domain after finding that the Respondent had no rights to the name and had registered it in bad faith.
Background and Trademark Context
The Complainant, Hershey Canada Inc., is a well-established entity in the confectionery industry, specifically associated with the BROOKSIDE brand. Known primarily for its dark chocolate-covered fruit juices and nuts, the BROOKSIDE mark has achieved significant recognition in the Canadian and international markets. The brand’s identity is inextricably linked to chocolate products, making the trademark a valuable intellectual property asset for the Hershey group of companies.
The Respondent, Tregubov Stanislav, registered the domain brookside-chocolate.com. This domain name consists of the BROOKSIDE mark, a hyphen, and the descriptive term “chocolate.” By combining the brand name with the generic name of the product the brand is famous for, the registration created a digital asset that appeared to be an official extension of Hershey’s online presence.
The UDRP Test and Panel Analysis
To succeed in a UDRP proceeding, a Complainant must satisfy three distinct elements. In this case, the Panel found that Hershey Canada Inc. met all the necessary criteria to warrant a transfer of the domain.
Identical or Confusingly Similar
The first element requires the Complainant to prove that the domain is identical or confusingly similar to a trademark in which they have rights. Hershey Canada Inc. provided evidence of its registered trademark rights for BROOKSIDE.
The Panelist observed that the domain brookside-chocolate.com incorporates the BROOKSIDE mark in its entirety. The addition of the word “chocolate” does not negate the confusing similarity. In UDRP jurisprudence, adding a descriptive term that relates to the Complainant’s business—in this case, the product Hershey actually sells under that mark—typically reinforces the confusing similarity rather than diminishing it. The Top-Level Domain (TLD) “.com” is generally disregarded in this comparison as a standard technical requirement.
Rights or Legitimate Interests
The second element requires the Complainant to make a prima facie case that the Respondent lacks rights or legitimate interests in the domain. Hershey Canada Inc. asserted that it had not authorized or licensed the Respondent to use the BROOKSIDE mark.
The Respondent, Tregubov Stanislav, failed to provide evidence of any “bona fide” offering of goods or services or any legitimate non-commercial use of the domain. There was no indication that the Respondent was commonly known by the name “Brookside” or “Brookside Chocolate.” Consequently, the Panel concluded that the Respondent had no legitimate claim to the domain, especially given that the domain choice appeared designed to capitalize on the reputation of the Complainant’s brand.
Registration and Use in Bad Faith
The third element focuses on whether the domain was registered and is being used in bad faith. The Panelist found that the Respondent likely had the Complainant’s trademark in mind when registering the domain.
The specific combination of “brookside” and “chocolate” strongly suggests that the Respondent was aware of Hershey’s brand. Registering a domain that mimics a famous mark and includes the industry in which that mark operates is frequently cited by Panels as evidence of targeting. Whether the domain was used for a parked page with commercial links or held passively, the circumstances indicated that the Respondent intended to exploit the trademark’s goodwill. The Panelist determined that such registration and use were aimed at creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, or affiliation of the website.
Key Evidence and Reasoning
The decision to transfer the domain was supported by several decisive factors in the case record:
- Trademark Dominance: The BROOKSIDE mark is the distinctive and dominant element of the disputed domain name, making it the primary focal point for consumers.
- Descriptive Suffix: The inclusion of “-chocolate” was viewed as a deliberate attempt to associate the domain with the Complainant’s specific commercial niche, thereby increasing the potential for user deception.
- Lack of Authorization: The Complainant confirmed that no relationship exists between the parties that would justify the Respondent’s use of the BROOKSIDE mark in a domain name.
- Targeted Registration: The Panel found it improbable that the Respondent chose the domain name without knowledge of Hershey’s confectionery brand, given the specific nature of the trademark and the product it represents.
- Absence of Response: The Respondent’s failure to submit a formal response to the Complainant’s allegations allowed the Panel to draw reasonable inferences regarding the Respondent’s lack of rights and bad faith intentions.
Practical Takeaways for Brand Owners
The outcome in *Hershey Canada Inc. v. Tregubov Stanislav* highlights several strategies for brand owners regarding domain name protection and enforcement:
- Monitor Industry-Specific Suffixes: Brand owners should actively monitor for domain registrations that combine their trademarks with descriptive terms related to their core products (e.g., [Brand]-[Product].com).
- Defensive Registration Strategy: For primary brands, it may be cost-effective to defensively register common “Mark + Product” combinations to prevent third parties from occupying those digital spaces.
- UDRP as a Consistent Tool: This case reinforces the effectiveness of the UDRP in resolving clear-cut cases of cybersquatting where the domain name is used to impersonate or capitalize on an established brand’s reputation.
- Maintain Clear Trademark Records: Having well-documented trademark registrations across various jurisdictions is essential for establishing the first element of the UDRP test quickly and efficiently.
- Prompt Enforcement: Addressing infringing domains shortly after they are identified can prevent the Respondent from establishing a history of use that might complicate a future dispute.
If you need help assessing or pursuing a UDRP transfer for a look-alike domain, ClaimOn can assist.
