WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION The Bread Becker s, Inc. v. Belize Domain WHOIS Service Lt and Comar Ltd. Case No. D2009-0787 1. The Parties
Complainant is The Bread Beckers, Inc. of Woodstock, Georgia, United States of America, represented by The Gigalaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.
Respondents are Belize Domain WHOIS Service Lt, Belize, Wisconsin, United States, and Comar Ltd., St. Petersburg, Russian Federation. 2. The Domain Name and Registrar
As more fully discussed below, the disputed domain name was, at the time of filing of the Complaint, registered with Intercosmos Media Group, Inc, which apparently does business as DirectNIC, Ltd. and DirectN (“DirectNIC”); it is currently registered with Fiducia LLC, Latvijas Parstavnieciba (“Fiducia”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on June 15, 2009. On June 15, 2009, the Center transmitted by email to DirectNIC a request for registrar verification in connection with the disputed domain name. On June 15, 2009, DirectNIC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant, providing the contact information for registrant, and providing other details of the registration, including that the domain name was to expire on October 5, 2009 but that it would “remain locked during the pending administrative proceeding.” The Center verified that the satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 22, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 12, 2009. The Respondent did not submit any response. Accordingly, the Center notified Respondent's default on July 13, 2009.
The Center appointed Debra J. Stanek as the sole panelist in this matter on July 17, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Subsequent to the Panel's appointment, the Center became aware of a change in the registration details, reflecting an apparent transfer of the domain name to a different registrant, “Whois privacy services, provided by DomainProtect”, and to a different registrar, Fiducia.
On July 31, 2009, the Center sent by email to DirectNIC (which had previously confirmed that it was the registrar of record and that the domain name had been locked) a request for clarification regarding the circumstances of the apparent transfer and requesting a re-confirmation that the domain name would be locked during the proceedings. The Center did not receive a response from DirectNIC.
On August 6, 2009, the Panel issued Procedural Order No. 1, directed to both registrars involved, DirectNIC, and Fiducia, as well as to the parties. The order requested that each of the registrars provide information regarding the circumstances of the transfer of the domain name and confirm that the domain name would be and remain locked pursuant to paragraph 8 of the UDRP. The parties were invited to provide supplemental submissions regarding the new factual information regarding the registration and the entity then listed as the registrant was sent a copy of the order by email. The order requested all responses or submissions by August 10, 2009.
On August 7, 2009, DirectNIC provided a response that stated: that “the customer deleted the domain name”, and further indicating that based on the publicly available WHOIS information, the domain name was then registered on June 24, 2009.
On August 10, 2009, the Complainant provided a supplemental statement regarding the change of registrant and registrar.
On August 13, 2009, the Panel issued Procedural Order Number 2 to allow time for further investigation of the matter.
On August 14, 2009, Fiducia confirmed that the domain name was registered to “Comar Ltd.” and that it would remain locked for the purposes of the UDRP proceedings.
On August 21, 2009 and September 4, 2009, the Panel issued Procedural Orders Number 3 and 4, respective, in each case to allow additional time for the Center to continue to raise with ICANN the investigation of the matter with the registrars and ICANN's Contractual Compliance Department.
On September 18, 2009, the Center sent by email to the registrant, Comar Ltd., an invitation to provide any comments regarding these UDRP proceedings, using the email address in the registration. However, the email address appeared to be invalid.
On September 21, 2009, the Center again sent by email an invitation seeking comments regarding these proceedings, noting the apparent invalidity of the email address and confirming that the communication along with a copy of the Complaint would be forwarded to the registrant by courier. Again, the email address appeared to be invalid.
However, on September 22, 2009, the Center received a communication from the current registrant of record, stating:
“Dear WIPO,
domain@ is a valid e-mail address. We receive correspondence from you.
With best regards,
Comar Ltd.” 4. Factual Background
Complainant uses the trademark BREAD BECKERS for wheat, dry grains and beans, raw honey, yeast, bakeware, books, baking accessories and related products. It has provided these goods and other services since at least 1998, when it was incorporated as “The Bread Beckers, Inc.”
Complainant owns a United States federal trademark application for the mark THE BREAD BECKERS, for retail and online store services related to the products that it sells. Complainant also offers its products through its website at “.”
Respondent Belize Domain WHOIS Service Lt registered the domain name in October 2005 and used it for a website that contained links to products and services that are similar to those offered by Complainant, such as wheat, whole grain flour, and oats. At some point during the course of these proceedings, the domain name stopped being used in that way and no longer leads to an active web page. 5. Parties' Contentions A. Complainant 1. The domain name is identical or confusingly similar to a mark in which Complainant has rights
Complainant has used the mark THE BREAD BECKERS since at least 1998 for baking ingredients and other products. In addition to offering them through its “” website, it operates a store for retail sales and a warehouse for bulk orders, offers seminars, and sells audiotapes offering nutritional and spiritual advice. Complainant's 2008 gross sales were $2.9 million. In addition it has promoted its mark in newspapers, published a cookbook, and, for many years, has published a newsletter, and is the subject of numerous Internet blog posts, among other things.1
Complainant has common law trademark rights in the mark THE BREAD BECKERS as a result of its use of the mark for eleven years, its advertising and marketing under the mark, and the recognition it has achieved by consumers and the media.
The disputed domain name consists of Complainant's mark in its entirety. 2. The Respondent has no rights or legitimate interests in respect of the domain name
Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized Respondent to register or use its THE BREAD BECKERS mark.
Respondent has not, before any notice to him of this dispute, used, or prepared to use, the disputed domain name or a corresponding name in connection with a bona fide offering of goods or services. Rather, Respondent is using the disputed domain name in connection with a portal site that provides general links to various third-party goods and services competitive with Complainant's goods and services.
According to the Whois database, the registrant is “Belize Domain WHOIS Service Lt” – not “The Bread Beckers” or any name containing any of those words. Further, due to Complainant's use of its mark for over eleven years, it is unlikely that Respondent is commonly known by Complainant's mark.
Respondent is making an illegitimate, commercial, unfair use of the domain name, with intent for commercial gain to divert consumers. Respondent uses the domain name in connection with a portal site that provides general sponsored links to various third-party goods and services. Such use clearly is for commercial gain.
Although the domain name does include the term “bread,” which describes content on Respondent's website, it also contains the term “beckers,” which does not describe any content on Respondent's website. In fact, the term “beckers” is a fanciful term that is not a word in the English language (or in any other language, to Complainant's knowledge). Rather, “Becker” is the surname of one of Complainant's founders. 3. The domain name was registered and is being used in bad faith
Complainant is being prevented from registering the disputed domain name, and Respondent has engaged in a pattern of this conduct. Respondent has been named as the respondent in at least 64 UDRP proceedings, 62 of which resulted in a transfer of the domain name at issue.
Bad faith also exists because Respondent is intentionally attempting to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with Complainant's mark. Web pages of the type used by Respondent permit it to profit from the domain name.
Given Complainant's established rights in its THE BREAD BECKERS mark and the fact that the domain name is obviously connected with Complainant, Respondent's actions suggest “opportunistic bad faith” in violation of the Policy.
In its supplemental submission in response to Procedural Order No. 1, Complainant also contended that the change in the registration is clear evidence of “cyberflight.”
Complainant acknowledged that it appeared that the domain name was no longer being used, but that on the facts presented, including Complainant having a well-known trademark, failure to respond to the Complaint, Respondent's concealing its identity, and the impossibility of conceiving a good faith use of the domain name, the Panel should infer that the domain name was being used in bad faith.
Complainant further noted that the domain name had not been due to expire until October 5, 2009, therefore had the registrar locked the domain name in accordance with the Policy, Respondent should not have been able to simply “delete” the registration. The Complainant suggested that DirectNIC's explanation was suspect and the circumstance presented should not be used to undermine or frustrate the purposes of the Policy. B. Respondents
Respondents did not reply to Complainant's contentions. 6. Discussion and Findings A. Procedural Matters (1) Transfer of Domain Name during Proceedings
As noted above, despite DirectNIC's confirmation that the domain name was “locked,” it nonetheless permitted its customer to “delete” the domain name during these proceedings. In the Panel's view, the deletion of the domain name is not consistent with the Policy, paragraph 8(a), which prohibits transfer of a domain name registration to another holder during the pendency of proceedings under the UDRP. Further, the Panel views DirectNIC's conduct in permitting the deletion as inconsistent with the UDRP and its other obligations as a registrar. Further, the Panel notes the general lack of responsiveness of both of the registrars involved, which contributed to the delay in these proceedings. (2) Multiple Respondents
The Rules define the “Respondent” as “the holder of a domain-name registration against which a complaint is initiated.” See Rules, paragraph 1, s.v. “Respondent.” The Panel is of the view that a complaint is “initiated” when it is filed with the Center as described in the Rules, paragraph 3. This is consistent with the paragraph 3(a) of the Rules2, which provides (emphasis added):
Any person or entity may initiate an administrative proceeding by submitting a complaint in accordance with the Policy and these Rules to any Provider approved by ICANN.
Therefore, under the Panel's view, Belize Domain WHOIS Service Lt remains a proper Respondent in this case. On these facts, however, the Panel finds evidence of cyberflight and pursuant to the powers and discretion granted to the Panel under the Rules, paragraph 10, the Panel also designates Comar Ltd. as a Respondent. To do otherwise under these circumstances would undercut the efficacy of the proceedings. (3) Notice to Respondent
The Panel is satisfied that the Center took all steps reasonably necessary to notify each of the Respondents of the initiation of these proceedings, including providing a copy of the Complaint and an opportunity to respond to each.
Further, it is clear from the communication subsequently received by Comar Ltd., that it had actual notice of these proceedings and the Complaint. B. Substantive Discussion
In order to prevail, Complainant must prove that:
(i) The disputed domain name is identical or confusingly similar to Complainant's mark.
(ii) Respondent has no rights or legitimate interests in respect to the domain name.
(iii) The domain name has been registered and is being used in bad faith.
Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a respondent's rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a respondent's bad faith registration and use, see Policy, paragraph 4(b). (1) Identical or Confusingly Similar
Complainant does not own a United States federal trademark registration for the mark THE BREAD BECKERS. Instead, it alleges that it has been using THE BREAD BECKERS mark since 1998. Complainant's allegations are supported by the affidavit of its chief executive officer providing some details regarding the length of time Complainant has used its marks, recent sales, and the manner in which it has used the mark in advertising and promotion, including providing examples showing the use of the mark.
Here, Complainant's corporate name is “The Bread Beckers, Inc.” and a fair number of the exhibits supplied by Complainant appear to use the term “The Bread Beckers, Incorporated” to identify the legal entity, rather than using the terms in a pure trademark sense. However, that name is incorporated into a logo used by Complainant consisting of the term “Bread Beckers” in large letters appearing below the term “the” and above the term “incorporated” (each of which are in a lighter and smaller fonts). The logo also includes other design elements, including a loaf of bread and wheat stalks. Further, under general principles of United States trademark law, a designation may function as both a trade name and a trademark.
In the Panel's view, “Bread Beckers” is a distinctive part of the trade name that creates a separate commercial impression, serving a trademark function. 3 The Panel finds, consistent with the consensus view, that Complainant has demonstrated rights in the mark BREAD BECKERS. See, e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Paragraph 1.7 (setting out consensus view as requiring a complainant asserting rights in an unregistered trademark to show that the mark has become a distinctive identifier associated with complainant or its goods and services, such as by providing evidence of length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition).
The Panel agrees that, as a general matter, a domain name is likely to be confusingly similar to a mark if it incorporates the mark or a variation of the mark, although such a finding is not automatic. Here, the addition the term “the” before BREAD BECKERS does nothing to effectively differentiate or distinguish the domain name from Complainant's mark. Further, the lack of spacing between terms and the addition of the generic top-level domains is not relevant for these purposes.
Accordingly, the Panel finds that the domain name is confusingly similar to a mark in which Complainant has rights. (2) Rights or Legitimate Interests
The Panel, consistent with the consensus view, finds that Complainant may establish that Respondents have no rights or legitimate interests in respect of a domain name by making a prima facie showing that Respondents lack rights or legitimate interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1 (once complainant makes prima facie case, respondent has burden of showing rights or legitimate interests in the domain name).
Paragraph 4(c) of the Policy sets out the following examples:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
It does not appear that Respondents engaged in any legitimate use of the domain name. There is no reason to believe, from the WHOIS record or otherwise, that Respondents are known by the domain name. Use of the term “bread” in a domain name for a site containing links to third party sites related to baking ingredients is, of course, unexceptional; however, use of the term in combination with “beckers” is not.
It does not appear that Respondents are making a legitimate noncommercial or fair use of the domain name. To the contrary, it appears that the domain name was being used to generate click-through revenue.
The Panel finds that Complainant has made a prima facie showing that has not been rebutted by Respondents.
Accordingly, the Panel finds that Respondents have no rights or legitimate interests in the domain name. (3) Registered and Used in Bad Faith
Under the Policy, Complainant must establish that the disputed domain name was registered and is being used in bad faith. The Policy itself sets out four sets of circumstances, evidence of which can establish bad faith, see Policy, paragraph 4(b)(i)-(iv):
(1) Registering the domain name primarily to sell it for more than documented out-of-pocket costs, see Policy, paragraph 4(b)(i).
(2) Registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct, see Policy, paragraph 4(b)(ii).
(3) Registering the domain name primarily to disrupt the business of a competitor, see Policy, paragraph 4(b)(iii).
(4) Using the domain name to intentionally attempt to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement, see Policy, paragraph 4(b)(iv).
While the evidence provided by Complainant does not show Complainant's use of the mark over time (for example, showing annual sales prior to the time Respondents registered ), it does include newsletters and a cookbook (published in 2000), that show Complainant's use of BREAD BECKERS as a mark years before registration and use of the domain name. The Panel finds it highly unlikely that Respondents were not aware of Complainant's mark at the time of registeration of the domain name.
Further, the Panel has already concluded that Respondents have no rights or legitimate interests in the domain name and that the use of the domain name was not in connection with a bona fide offering of goods or services.
The Panel also finds that the deletion and immediate re-registration of the domain name through a privacy service (as described in greater detail above) is evidence of cyberflying, which further supports a conclusion of bad faith. Neither of the two Respondents has offered any explanation or provided any response to the Complaint, which reinforces that conclusion.
Under these circumstances, the Panel finds that Complainant has established that Respondents have registered and are using the domain name in bad faith. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to Complainant.
Debra J. Stanek
Sole Panelist
Dated: September 30, 2009
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