The Complainants are Grupo Bimbo S.A.B. de C.V., Bimbo Hungria ZRT., Arnold Products, Inc., Orograin Bakeries Products, Inc. and Bimbo Bakeries USA, Inc. of Mexico City, Mexico, of Ujlengyel, Hungary and of Horsham, Pennsylvania, United States of America, respectively, represented by Brinks Hofer Gilson & Lione, United States of America.
The Respondent is John Paulsen of Saint Helen, Michigan, United States of America. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , , , , , , , , , , , , , , , , , and are registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 29, 2010. On September 30, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain names. On October 1, 2010, GoD, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a communication by the Center that the Complaint exceeded the applicable word limit of 5000 words, the Complainant filed an Amended Complaint on October 5, 2010.1 The Center verified that the Amended 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 October 7, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 27, 2010. On that day, the Center, following a request thereto from the Respondent, granted the Respondent an extension to submit its Response. The new due date for Response was November 3, 2010. The Response was filed with the Center on November 3, 2010.2
The Center appointed William R. Towns as the sole panelist in this matter on November 9, 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.
Due to exceptional circumstances the Panel requested the Center to extend the Decision due date. 4. Factual Background
The Complainants consist of Grupo Bimbo S.A.B. de C.V., of Mexico (hereinafter “Grupo Bimbo”), Bimbo Hungria ZRT. (hereinafter “Bimbo Hungria”), Arnold Products, Inc. (hereinafter “Arnold”), Orograin Bakeries Products, Inc. (hereinafter “Orograin”), and Bimbo Bakeries USA, Inc. (hereinafter “Bimbo USA”) (collectively referred to hereinafter as the “Complainants”). Grupo Bimbo is a large and internationally known baking company. The other Complainants all appear to be subsidiaries of Grupo Bimbo, according to the Complaint. Each of the Complainants individually owns or otherwise asserts enforceable rights in one or more trademarks to which it is asserted that the disputed domain names are identical or confusingly similar.
The Complainants are asserting rights individually in twenty-four (24) trademarks, and have provided evidence of valid and subsisting national trademark registrations in the United States of America (issued by the United States Patent and Trademark Office (“USPTO”)), respectively, for the following fifteen (15) trademarks:
Complainant Grupo Bimbo
GRUPO BIMBO
BIMBO
TIA ROSA
CORONADO
LARA
Complainant Arnold
SANDWICH THINS
BROWNBERRY
FILL `EMS3
Complainant Orograin4
BOBOLI
ENTENMANN’S
FREIHOFER’S
STROEHMANN
Complainant Bimbo USA
FRANCISCO
OLD COUNTRY
OROWEAT
The Complaint further asserts that Complainant Bimbo Hungria is the “registered owner” of the BAGEL THINS mark. However, no proof of a national trademark registration has been provided for BAGEL THINS. The record reflects that Bimbo Hungria has filed an application with the USPTO to register BAGEL THINS for use with “bakery goods”, but the USPTO has to date refused registration based on descriptiveness. The prosecution history of the BAGEL THINS application – which is publicly available online on the USPTO website – provides indication that several of the Complainant’s competitors may be using “Bagel Thins” with similar baked goods.
In addition, Complainant Orograin maintains it is using the BAGEL THINS mark under license from Complainant Bimbo Hungria. However, the materials submitted with the Complaint insofar as the Panel can determine do not indicate use of the mark by Orograin, and no license agreement between Bimbo Hungria and Orograin has been provided.5
The Respondent registered the disputed domain names between March 12, 2010 and September 1, 2010, as follows:
(registered on March 25, 2010)
(registered on May 5, 2010)
(registered on August 4, 2010)
(registered on September 1, 2010)
(registered on September 1, 2010)
(registered on August 20, 2010) (registered on August 20, 2010) (registered on August 20, 2010) (registered on August 20, 2010) (registered on August 29, 2010) (registered on August 29, 2010) (registered on August 20, 2010) (registered on August 20, 2010) (registered on August 29, 2010) (registered on August 29, 2010) (registered on August 29, 2010) (registered on August 20, 2010) (registered on August 29, 2010) (registered on August 20, 2010) (registered on August 20, 2010) (registered on August 29, 2010) (registered on August 20, 2010) (registered on August 29, 2010) (registered on August 29, 2010) At present, all of the disputed domain names resolve to pay-per-click parking sites, featuring advertising links to websites featuring baked goods, including the goods of a number of the Complainants’ competitors. Initially, the Respondent had directed the disputed domain name to the website of one of these competing baking companies. After receiving notice of the Complainants’ asserted trademark rights in BAGEL THINS, the Respondent discontinued this use of this disputed domain name, but as noted above, instead associated the disputed domain name with a pay-per-click parking site. The Respondent registered the vast majority of the twenty-five disputed domain names after this initial contact by the Complainants’ counsel. The Respondent registered twenty-one of the disputed domain names during a two-week period from August 20, 2010 to September 1, 2010, and contacted the Complainants’ counsel on an unsolicited basis on at least two occasions to note his registration of these domain names, which he opined the Complainants would find “interesting”. Subsequently, the Respondent also declined an offer from the Complainants to buy the disputed domain names for the sum of USD 500 each, maintaining that the disputed domain names were worth far more. 5. Parties’ Contentions A. Complainants The Complainants maintain the Respondent has engaged in a practice and pattern of registering domain names that are identical or confusingly similar to trademarks in which the Complainants have established rights through registration and use. According to the Complainants, the Respondent has no rights or legitimate interests in any of the disputed domain names, as the Respondent has not been authorized to use the Complainants’ marks, has not been commonly known by the disputed domain names, and has not used the disputed domain names in connection with a bona fide offering of goods or services, or otherwise made a legitimate noncommercial or other fair use of the disputed domain names. To the contrary, the Complainants assert that the Respondent registered and is using the disputed domain names in bad faith in an intentional attempt for commercial gain to create a likelihood of confusion with the Complainants’ marks. The Complainants’ argue that such bad faith is reflected in the Respondent’s use of the disputed domain names to divert Internet users to the Respondent’s parked websites, in order to generate advertising revenue from pay-per-click links to third party websites promoting the goods of the Complainants’ competitors. The Complainants further assert that the Respondent’s bad faith is established by his registration of the disputed domain names primarily for purposes of selling the disputed domain names to the Complainants at an amount greatly in excess of the Respondent’s out-of-pocket costs related to the disputed domain names, and that such bad faith is evidenced by a clear pattern of intentionally registering multiple domain names reflecting the Complainants’ marks. B. Respondent The Response submitted in this case does not a directly address the Complainants’ arguments regarding the elements of paragraph 4(a) of the Policy, but instead asserts that the process provided for under the UDRP is corrupt and inherently unfair in that “it favors the haves and unfairly penalizes and punishes the have nots”. The Respondent states that he does not recognize “the authority of WIPO or any other would be ‘World Policing Organization’”, and that he is certain his domain names “will be stolen” by the Complainants and their attorneys.6 6. Preliminary Procedural Issue: Consolidation of Multiple Complainants A. Consolidation of Multiple Complainants under the Policy and Rules The Policy and the Rules do not expressly contemplate the consolidation of multiple complainants (or respondents) in a unitary administrative proceeding, and generally speak in singular terms of a “complainant” when referring to proceedings under the Policy. This Panel, along with a number of WIPO Panels, nonetheless has concluded that the use of the singular “complainant” in the Policy and Rules was not meant to preclude multiple legal persons in appropriate circumstances from jointly seeking relief in a single administrative proceeding under the Policy. MLB Advanced Media, The Phillies, Padres LP v. OreNet, Inc.,WIPO Case No. D2009-0985. See also Alabama One Call, Louisiana One Call System, Tennessee One-Call System, Inc. v. Windward Marketing Group, Inc.,WIPO Case No. D2009-1243; Fulham Football Club (1987) Limited, Tottenham Hostpur Public Limited, West Ham United Football Club PLC, Manchester United Limited, The Liverpool Football Club And Athletic Grounds Limited v. Domains by Proxy, Inc./ Official Tickets Ltd,WIPO Case No. D2009-0331; ITT Manufacturing Enterprises, Inc., ITT Corporation v. Douglas Nicoll, Differential Pressure Instruments, Inc.,WIPO Case No. D2008-0936. See also National Dial A Word Registry Pty Ltd and others v. 1300 Directory Pty Ltd,WIPO Case No. DAU2008-0021.7 B. General Principles of Consolidation in Multiple Complainant Cases Beginning with the decisions in National Dial A Word Registry Pty Ltd, supra, and Fulham Football Club (1987) Limited, supra, UDRP panelists have sought to distill from the body of relevant UDRP decisions principles to apply in determining when consolidation of multiple complainants should be permitted, having regard to all of the relevant circumstances. The overriding principle as articulated by the panel in National Dial A Word Registry Pty Ltd, supra, and generally adopted in UDRP panel decisions cited above can be stated as follows: The consolidation of multiple complainants in a single complaint should be permitted if the complainants have a truly common grievance against the respondent, and it is equitable and procedurally efficient to do so. Under the consolidation principles set forth in National Dial A Word Registry Pty Ltd, supra, and Fulham Football Club (1987) Limited, supra, petitioning multiple complainants may have a common grievance against the respondent where they have a common legal interest in relevant right or rights allegedly affected by the respondent’s conduct. A common grievance may also be present, even in the absence of a shared legal interest in a specific trademark, where the multiple complainants are the target of common conduct by the respondent that has clearly affected their individual legal interests. These instances are not intended to be exclusive of circumstances in which a common grievance sufficient to justify consolidation may exist; however, a “truly common grievance” must be demonstrated, and consolidation must be equitable to all parties and procedurally efficient. MLB Advanced Media, supra. “The concept of ‘common legal interests’ as reflected in the body of relevant UDRP Panel […] decisions has proven somewhat elastic. Common legal interests have been recognized in situations where: (1) the multiple complainants have a shared interest in a particular trademark, such as may exist between a licensor and a licensee; (2) the multiple complainants form part of a ‘single entity’ where the individual companies are part of a larger corporate group or joint venture; and (3) the multiple complainants are members of an established association or league in which individual members have rights authorized to be enforced by the association. Consolidation in the first of these situations clearly involves a common legal interest in a particular trademark, whereas the consolidation in the second and third situations seems to be predicated either on the multiple complainants’ existence within an ‘overarching legal system’ or the presence of an ‘overarching legal entity’ in which the complainants’ individual rights have been vested.” See MLB Advanced Media, supra. As noted in National Dial A Word Registry Pty Ltd, supra, in situations where petitioning multiple complainants do not have a shared interest in a particular trademark, and otherwise there is no “overarching legal structure” or “overarching legal entity”, it is unlikely that the complainants can demonstrate a common legal interest sufficient to justify their consolidation in a single complaint. Nevertheless, under the National Dial A Word Registry Pty Ltd/Fulham Football Club (1987) Limited analysis, even in the absence of a sufficient common legal interest, consolidation may still be appropriate where multiple complainants can demonstrate they are the targets of common conduct by the respondent, and that such conduct has affected their relevant individual legal interests in a common manner. Assuming that a common grievance against the respondent is demonstrated, multiple complainants nonetheless should be permitted to proceed under a single complaint only where to do so is (1) equitable to all of the parties (i.e., fair and just), and (2) procedurally efficient from the perspective of judicial economy. Significantly, “even where such a ‘common grievance’ is shown to exist, the dispute must be one which is appropriate for disposition in the context of the summary administrative proceeding provided for under the Policy”, see MLB Advanced Media, supra. It is incumbent upon panels to determine that consolidation will be both procedurally efficient and fair and equitable to all parties. C. Application of Consolidation Principles in this Case In this instance, the Panel notes at the outset that the Complaint does not specifically state as such that the petitioning Complainants as a group have a “common legal interest” in the trademarks being asserted. In the Panel’s view, the record reflects that the Complainants rely upon individually vested rights in their respective marks, notwithstanding their apparent affiliation. There appears to be some basis for a claim of a common legal interest among some of the Complainants concerning BAGEL THINS, as noted earlier. See National Dial A Word Registry Pty Ltd, supra. However, as will be described further below, the Panel does not find it necessary to make a finding on whether the Complainants share a common legal interest such to ground a claim for consolidation in these proceedings.. As noted earlier, even in the absence of a common legal interest, a “common grievance” may still be demonstrated where multiple complainants show that they are the targets of common conduct by the respondent, and that such conduct has affected their relevant individual legal interests in a common manner. On this basis, the Panel notes that the Complainants have made arguments and presented evidence relative to analyzing whether there is a common grievance against the Respondent. The Respondent has registered a large number of domain names that appear to reflect marks in which one or more of the Complainants assert rights. See, e.g., Fulham Football Club (1987) Limited, supra. The Respondent’s registration of the disputed domain names appears to reflect a pattern specifically directed towards the Complainants as a group, particularly in light of the Respondent’s communications with the Complainants’ counsel regarding the domain name registrations. See, e.g., Alabama One Call, supra. The Respondent uses the disputed domain names for the most part with parking sites containing links to third party websites promoting the goods of the Complainant’s competitors. Such use also is indicative of a pattern of targeting the Complainants’ rights. However, as further described below, the Panel need not make a finding of whether the Complainants have demonstrated a common grievance since such standing alone does not support the consolidation of multiple complaints, unless it is also demonstrated that such consolidation will be fair and just to all parties, and procedurally efficient from the perspective of judicial economy. Indeed, given the - what some might see as - expansive nature of the “common grievance” standard, the conjoined requirements of procedural efficiency, fairness and equity are essential to ensure that the consolidated complaint will be appropriate for disposition under the Policy’s summary administrative proceeding. Prior panel decisions have identified a number of factors to be considered in determining whether consolidation of multiple complaints will be procedurally efficient and fair and just to all parties. Such considerations have included: Number of complainants; Number of domain names; Voluminous filings; Novel, difficult or largely untested issues; Potential for different outcomes for domain name disputes depending on nature of rights asserted. See, e.g., National Dial A Word Registry Pty Ltd, supra; Fulham Football Club (1987) Limited, supra; Alabama One Call, supra. Consolidation of multiple complaints in a single manageable proceeding under the Policy can produce procedural efficiencies preferable for all parties. See MLB Advanced Media, supra; Alabama One Call, supra. Conversely, where consolidation of multiple complaints presents an identifiable potential for a multiplicity of issues rendering the dispute resolution process inefficient, ineffective or inequitable, consolidation ordinarily should not be permitted. See National Dial A Word Registry Pty Ltd, supra. In this case, the Panel has taken into account the number of Complainants, the substantial number of marks in which the Complainants’ assert individual rights, and the substantial number of disputed domain names involved to be relevant concerns, bearing in mind that the consolidation is sought in the context of the Policy’s expedited and summary administrative proceeding. While the number of petitioning Complainants (five) is not of itself particularly daunting, there are nonetheless twenty-four (24) marks in which the five Complainants are asserting largely individual rights. Moreover, in this case the Complainants are asserting such individual rights in these twenty-four (24) marks with respect to twenty-five (25) disputed domain names. Moreover, the sheer number and nature of the Complainants’ individually asserted trademarks increase the complexity inherent in the analysis required under the Policy of the various trademarks that may or may not have vested and to varying corresponding degrees of strength (as elaborated below). The Complainants have submitted voluminous materials to support their claims, consisting of the twenty-three annexes to the Complaint. The original Complaint submitted in this case was significantly in excess of the 5000 word page limit made applicable to both the complaint and the response under paragraph 11 of the Supplemental Rules, as incorporated by paragraphs 3(b)(ix) and 5(b)(i) of the Rules. The Center requested the Complainants to submit an amended Complaint complying with the applicable requirements of the Rules and Supplemental Rules. The Complainants did so, but simultaneously submitted therewith an additional annex containing most of the material in the original Complaint that had been removed from the amended Complaint. As the Complainants’ counsel explained to the Center, in order to “still maintain the economy of having the dispute resolved through a single proceeding, Complainants moved much of their material detailing the background and history of Complainants’ marks to a supporting declaration contained in Annex W, while leaving the most important facts in the Complaint.”8 The Complainants in communications to the Center characterized the word limits imposed under the Rules and Supplemental Rules as merely “suggested”. The Panel disagrees with this characterization. While the Panel has the discretion to accept complaints and responses exceeding the word limits set out in the Rules and Supplemental Rules, these Rules are nonetheless essential to the efficacy of the summary dispute resolution proceeding envisioned by the Policy, and are not to be taken lightly by the parties. In the Panel’s view, this is particularly so in cases where multiple complainants are seeking consolidation involving a large number of disputed domain names. If the petitioning complainants are unable to effectively present their claims in a complaint that meets the requirements of the Policy and the Rules, including the word limit requirements, or can do so only by placing large portions of material more appropriately included in the complaint in an annex, or otherwise submit unnecessarily voluminous materials with the complaint, then there is legitimate reason for concern that consolidation in such circumstances may not be procedurally efficient, and fair and equitable to all parties. It should also be borne in mind that a respondent under the Policy and Rules is required to observe the 5,000 word limit when submitting a response, and must submit the response in twenty days unless the petitioning complainants agree to an extension of time (which the Complainants in this case declined to do), or the Center otherwise determines that exceptional circumstances warrant an extension (as the Center did in this case). While the administrative service provider undeniably performs a fundamental gatekeeper role in relation to screening complaints that obviously fail to meet the requisite criteria for consolidation, there is no compelling reason to place the onus of and primary responsibility for substantive review upon the administrative service provider as opposed to the panel. See Fulham Football Club (1987) Limited, supra. Ultimately, the determination whether consolidation will be procedurally efficient, effective and fair and equitable to all parties is one to be made by the UDRP panel. As foreshadowed above, this also is a case in which some potential exists for different outcomes of one or more domain name disputes based on the differing nature of the rights asserted by the individual Complainants. As noted earlier, two of the Complainants are seeking the transfer of the disputed domain names and based on the assertion of trademark rights in BAGEL THINS. Unlike the other trademarks in which the Complainants assert rights, however, there is no evidence in the record that the rights asserted in BAGEL THINS are based on a national registration or that common law rights in the same have vested. Further, the record reflects the USPTO’s current refusal to register BAGEL THINS as a mark based on descriptiveness issues, which under United States trademark law generally requires proof of secondary meaning in order to establish enforceable rights. As a result, there appear to be different issues to be addressed under the first element of the Policy involving the disputed domain names and arising from the differing nature of the rights asserted by the Complainants in BAGEL THINS. In addition the descriptiveness question referred to above may also create the potential for different outcomes with respect to these disputed domain names under the second or third elements of the Policy. And, as noted earlier, initially was used by the Respondent in a way that it appears the other disputed domain names have not been used. For all of the foregoing reasons, the Panel after careful consideration is not persuaded that the Complainants have made a sufficient showing to permit consolidation of the multiple complainants involved here. The Panel is concerned among other things that a multiplicity of issues could render the summary and expedited dispute resolution process envisioned by the Policy inefficient or ineffective, or even raise issues concerning fairness and equity. See National Dial A Word Registry Pty Ltd, supra. Accordingly, the Panel finds that the domain name disputes asserted by the multiple complaints in this matter should not be permitted to be consolidated into a single, unitary proceeding under the Policy. As such, the Panel dismisses the Complaint without prejudice, and subject to rights of each of the Complainants herein to file in their individual capacity complaints against the Respondent in relation to the disputed domain names identified herein, and based on the rights that have been asserted by the respective Complainants’ herein. 7. Decision For all the foregoing reasons, and as indicated above, the Complainant is dismissed. William R. Towns 1 The Complainant submitted an additional annex with the Amended Complaint – Annex W – which appears to incorporate the balance of what was initially presented in the original Complaint. 2 The Response, which consists of a brief email, does not specifically address the substance of the Complaint, but instead disputes the legitimacy, integrity and fairness of this proceeding under the UDRP. 3 Arnold also asserts common law trademark rights in ARNOLD FILL `EMS. 4 As discussed below, Orograin asserts enforceable trademark rights in BAGEL THINS as a licensee of the mark, which the Complainant Bimbo Hungria asserts ownership of. 5 The materials submitted with the Complainant appear to indicate use of BAGEL THINS by Thomas, which the Panel assumes to be another subsidiary of Grupo Bimbo. Insofar as the Panel can determine, however, these materials do not reflect use by Orograin. 6 The Panel notes that the Respondent previously had requested an extension of time of not less than 270 days to respond to the Complaint. The Complainants opposed any extension, but the Center, after further consideration and Respondent requesting for an extension of two weeks, extended the time for the Response by an additional week. 7 The auDRP in many salient respects mirrors the UDRP, and the analysis of the panel in National Dial A Word Registry Pty Ltd, supra, has been generally adopted in the UDRP panel decisions cited above. 8 This is the explanation provided by Complainants’ counsel to the Center in an email dated October 5, 2010, which is included in the administrative record of this case.
Sole Panelist
Dated: December 3, 2010
Full & Egal Universal Law Academy