The Complainant is Three Brothers Bakery of Houston, Texas, United States of America, represented by Buskop Law - Patents & Trademarks, 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. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2013. On August 21, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 21, 2013, the Registrar 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 August 27, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 16, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 18, 2013.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on September 25, 2013. 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 owns a United States (“U.S.”) trademark registration for THREE BROTHERS BAKERY (Registration No. 4,360,306 in association with retail and wholesale bakery stores, with first use dating back to 1960).
The Complainant owns the domain name and operates an associated website for its business. The Complainant also previously owned the registration for the disputed domain name , but neglected to renew the disputed domain name by the due date. On April 3, 2004 the Respondent purchased the disputed domain name.
As of the date of the Complaint the disputed domain name reverted to a website which provided links to third party sites which were offering identical wares and services to those of the Complainant. 5. Parties’ Contentions A. Complainant Identical or Confusingly Similar
The Complainant submits that it owns a U.S. trademark registration for the trademark THREE BROTHERS BAKERY (Registration No. 4,360,306) dated July 2, 2013. The Complainant’s trademark registration relies on a date of first use since 1960.
The Complainant contends that the disputed domain name is identical to its THREE BROTHERS BAKERY trademark. Rights and Legitimate interests
The Complainant submits that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Complainant contends that the Respondent has not used the disputed domain name in association with a bona fide offering of goods and services. Annex 5 to the Complaint includes copies of print-outs showing use of the disputed domain name in association with a click through site to websites of third parties offering identical wares and services to those of the Complainant. Registered and Used in Bad Faith
The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith because the Respondent appears to be holding the disputed domain name for the purpose of selling, renting or otherwise transferring the disputed domain name for valuable consideration in excess of the Respondent’s out-of-pocket costs. The Complainant, as previous owner of the disputed domain name has attempted to re-purchase the disputed domain name from the Respondent in the past, but the price the Respondent was seeking was too high. The Complainant submits that at the time the Complaint was filed, it could not establish contact with the Respondent for purposes of negotiating purchase of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(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. A. Identical or Confusingly Similar
The Panel finds that the Complainant does have registered trademark rights in the mark THREE BROTHERS BAKERY by virtue of its U.S. trademark registration No. 4,360,306.
The Panel further finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark THREE BROTHERS BAKERY. The addition of the generic
Top-Level Domain “.com” does not serve to distinguish the disputed domain name from the Complainant’s registered trademark THREE BROTHERS BAKERY.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Based on the evidentiary record submitted in this proceeding, the Panel is prepared to find that the Complainant has a longstanding reputation in the trademark THREE BROTHERS BAKERY in association with retail and wholesale bakery stores. It would have been helpful to have had a more fulsome record of the Complainant’s early use of its trademark; however, the Panel accepts that the Complainant has used and promoted the THREE BROTHERS BAKERY trademark since the early 1960’s as claimed in the U.S. trademark registration.
The Panel accepts the evidence that the Respondent is using the disputed domain name, at the time the Complaint was filed, in association with a website that provided links to third party websites which offered directly or indirectly bakery wares and services identical and in competition to the Complainant’s services. The Panel is therefore prepared to find that the Respondent is not using the disputed domain name in association with a bona fide offering of goods and/or services, or with any authorization or license from the Complainant.
Accordingly, and in the absence of any evidence to the contrary from the Respondent the Panel is prepared to find that the Complainant has satisfied the required under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel is prepared to find that the Respondent registered and is using the disputed domain name in bad faith, based on (1) the distinctive nature and first use dating back to 1960 of the Complainant’s trademark, (2) the fact of the Complainant’s prior ownership of the disputed domain name, and (3) the use of the
click-through links to outright competitors of the Complainant.
In the absence of any response by the Respondent, the Panel is prepared to find that the Complainant has satisfied the requirement under paragraph 4(a)(iii) of the Policy. 7. Decision
For 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.
Christopher J. Pibus
Sole Panelist
Date: October 10, 2013
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