WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION BAB, Inc. v. Eighty Business Names Case No. D2010-0478 1. The Parties
The Complainant is BAB, Inc. of Deerfield, Illinois, United States of America, represented by Baker & McKenzie, United States of America.
The Respondent is Eighty Business Names of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with R Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 29, 2010. On March 30, 2010, the Center transmitted by email to R Corp. a request for registrar verification in connection with the disputed domain name. On April 1, 2010, R Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 8, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 28, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 29, 2010.
The Center appointed John Swinson as the sole panelist in this matter on May 4, 2010. 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. 4. Factual Background
The Complainant in this matter is a Delaware corporation. It is a restaurant franchisor that offers restaurant and bakery goods and services under brands which include “My Favorite Muffin”. The Complainant owns a number of trade mark registrations for MY FAVORITE MUFFIN globally, the first of these having been registered in the United States in 1988.
The Respondent registered the disputed domain name on May 5, 2004. 5. Parties' Contentions A. Complainant
The Complainant submits first that it has extensive rights in the MY FAVORITE MUFFIN brand. It owns registrations and applications for the MY FAVORITE MUFFIN trade mark in a number of countries for a variety of goods and services related to its business. The disputed domain name incorporates the MY FAVORITE MUFFIN mark. The Respondent has therefore registered a domain name that is identical or confusingly similar to a mark in which the Complainant has rights.
Second, the Complainant submits that there is no evidence that the Respondent is making legitimate noncommerical or fair use of the disputed domain name. The Complainant requested the previous registrant of the disputed domain name to transfer it to the Complainant. The Respondent's predecessor failed to respond to that request. A similar request was sent to the Respondent. Again, no response was received.
Finally, the Complainant submits that the Respondent registered the disputed domain name in bad faith. The Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark. The Complainant notes that the website at the disputed domain name prominently displays the title “”, contains photographs of muffins and links to recipes for muffins, amongst other things. It includes a copyright notice in the name of “”. The Complainant submits that this use of the disputed domain name amounts to a commercial offering of goods and services which consumers are likely to mistakenly believe originate with the Complainant. Additionally, the Complainant submits that the disputed domain name was transferred to the Respondent after its predecessor had been notified of the Complainant's rights. The Respondent must be presumed to have knowledge of those rights. Continuing to register the disputed domain name in those circumstances is, the Complainant submits, evidence of bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Complainant bears the onus of demonstrating that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
In the Panel's view, all of the elements have been satisfied in this case. A. Identical or Confusingly Similar
The Complainant clearly has extensive trade mark rights in MY FAVORITE MUFFIN. It owns trade mark registrations for MY FAVORITE MUFFIN as a word mark in a number of countries, including the United States, Canada, Peru, Egypt and various states in the Middle East. MY FAVORITE MUFFIN is one of the brands under which the Complainant sells its bakery products. It owns and operates the website at the domain name .
The dispute domain name incorporates the Complainant's mark in its entirety. It is clearly identical to the trade mark in which the Complainant has rights.
The Complainant has established the first element of the Policy. B. Rights or Legitimate Interests
The Complainant is required to demonstrate, prima facie,that the Respondent lacks rights or interests in the disputed domain name. The onus then shifts to the Respondent to demonstrate the existence of such rights or interests: see the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1.
It is reasonably clear that the Respondent is not making use of the MY FAVORITE MUFFIN mark with the Complainant's consent or authorisation. It is not making any apparent legitimate use of the domain name. It therefore appears, prima facie, that the Respondent does not have any legitimate rights or interest in the disputed domain name.
Paragraph 4(c) of the Policy outlines a number of means by which a respondent may be able to demonstrate rights or interests in a disputed domain:
(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.
The Respondent did not reply to the Complainant's contentions and there is nothing to indicate that it has any right or legitimate interest, whether by virtue of paragraph 4(c) of the Policy or otherwise, in the disputed domain name. There is no evidence that the Respondent is commonly known by the disputed domain name. Furthermore, the disputed domain name currently consists primarily of links to advertisements which appear to generate “pay per click” revenue. Pay per click parking pages which are “built” around a trade mark do not satisfy paragraph 4(c)(iii) of the Policy: Ustream.TV, Inc. v. Vertical Axis, Inc,WIPO Case No. D2008-0598. Additionally, the Panel notes that the presence of external links (unrelated to “muffins” in general) that would argue against the domain name having been registered for any descriptive value. On the facts of this case, the use by the Respondent of the disputed domain name as a pay per click parking page amounts to neither noncommercial use nor a bona fide offering of goods or services: see Budget Rent A Car System, Inc v. Admin, Domain,WIPO Case No. D2010-0149, citing Auer Lighting GmbH v. Domain Privacy LTD / The Tidewinds Group, Inc.,WIPO Case No. D2009-1622.
The Complainant has established the second element of the Policy. C. Registered and Used in Bad Faith
The Panel is satisfied that registration and use of the disputed domain name in bad faith has been established by the Complainant in this case.
Paragraph 4(b) of the Policy enumerates four circumstances that may be evidence of the registration and use of a domain name in bad faith. Subparagraph (iv) includes circumstances where the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website.
The disputed domain name currently resolves to a homepage that contains links for muffin and other recipes. On clicking those links, the user is directed to further links advertising external websites. Some of those further links are related to muffins or food products more generally. However, many are entirely unrelated.
It is clear that the Respondent in this case is attempting to divert Internet traffic to its website with a view to generating “pay per click” revenue. Given the strength of the Complainant's rights in the My Favorite Muffin brand, and the fact that many of the advertised links hosted on the disputed domain name are not related to muffin products, it may be inferred that the Respondent is attempting to trade off the Complainant's rights in order to do so.
The history of correspondence between the Respondent, the Complainant and the previous registrant of the disputed domain name, affirms the finely balanced view that the Respondent is acting in bad faith in this particular case. That history indicates that the Respondent was likely put on notice of the Complainant's rights in respect of the My Favorite Muffin brand before it registered the disputed domain name or shortly thereafter. The Respondent nonetheless continued and continues to make use of the disputed domain name. To do so with knowledge of the Complainant's rights is further evidence of bad faith in this case. 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 disputed domain name be transferred to the Complainant.
John Swinson
Sole Panelist
Dated: May 18, 2010
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