Complainant is Ingredion Incorporated of Bridgewater, New Jersey, United States of America, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.
Respondent is Tara Wright of Spokane, Washington, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2013. On December 19, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 31, 2013 the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on January 3, 2014.
The Center verified that the Complaint together with 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 Respondent of the Complaint, and the proceedings commenced on January 7, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 27, 2014. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 28, 2014.
The Center appointed Mark Partridge as the sole panelist in this matter on February 3, 2014. 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
Complainant is Ingredion Incorporated, an international corporation that processes various raw food materials into ingredients for the food, beverage, brewing and pharmaceutical industries. Complainant has introduced several products since the early 1900’s, when it was known as Corn Products International, notably launching its EXPANDEX product in 2006.
Complaint owns several international trademark registrations in the EXPANDEX mark:
EXPANDEX; Argentina; Reg. No. 3213339; registered on December 9, 2002.
EXPANDEX; Canada; Reg. No. 734012; registered on February 5, 2009.
EXPANDEX; Chile; Reg. No. 664709; registered on May 9, 2003.
EXPANDEX; Colombia; Reg. No. 241809; registered on August 30, 2001.
EXPANDEX; Ecuador; Reg. No. 18196; registered on July 31, 2002.
EXPANDEX; Germany; Reg. No. 4866232; registered on January 11, 2007.
EXPANDEX; Mexico; Reg. No. 772981; registered on December 11, 2002.
EXPANDEX; Peru; Reg. No. 87095; registered on March 4, 2003.
EXPANDEX; Switzerland; Reg. No. 582848; registered on February 11, 2009.
EXPANDEX; Uruguay; Reg. No. 433014; registered on March 8, 2002.
EXPANDEX; United States; Reg. No. 3,059,373; registered on February 14, 2006.
EXPANDEX; Venezuela; Reg. No. P251002; registered on April 12, 2004.
EXPANDEX; Community Trademark; Reg. No. 4866232; registered on January 11, 2007.
Respondent is Tara Wright, CEO of Fusion Flours. Respondent sells various dough mixes that combine Complainant’s EXPANDEX product with other gluten-free flours and starches.
Respondent registered the disputed domain name on December 2, 2009 with PDR Ltd. d/b/a PublicDomainR.
The disputed domain name does not resolve to anything, but does redirect to , the main page of Respondent’s business.
Prior to the filing of the complaint, the parties engaged in discussions regarding the disputed domain name and Respondent’s complaint about certain “freight charges.” 5. Parties’ Contentions A. Complainant
Complainant asserts that it has registered rights in the EXPANDEX mark, which has been used in commerce since as early as 2001. Respondent registered a domain name that incorporates the whole of Complainant’s EXPANDEX mark with no alteration or additions, and an Internet user would assume that the domain name should resolve to website offering Complainant’s goods and services.
Further, Respondent has no rights or legitimate interest in the disputed domain name, except to reinforce a false association between Complainant’s mark and Respondent’s goods. Respondent simply uses the disputed domain name to redirect Internet traffic to Respondent’s site, without making a bona fide offering of goods or services. Respondent cannot avail itself to the protections of a reseller because Respondent is not an authorized or unauthorized reseller of Complainant’s products and does not hold a license to use Complainant’s mark.
Finally, Respondent has registered and used the disputed domain name in bad faith, evidenced by Respondent’s attempt to profit from the sale of the disputed domain name. According to Complainant, Respondent’s use is clearly bad faith because the disputed domain name intentionally attracts Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark, and Respondent does so for commercial gain. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant must prove each of the following three elements of its case in order to obtain the requested relief:
(i) Respondent’s disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) Respondent’s disputed domain name has been registered and is being used in bad faith.
Further, paragraph 14 of the Rules states that:
“(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.
(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”
This Panel finds that Respondent has been afforded a fair opportunity to present its case, so the Panel will proceed to a decision on the Complaint.
Respondent’s default does not automatically result in a decision in favor of Complainant. Complainant is still required to prove each of the three elements required under paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
Complainant has trademark rights in the EXPANDEX mark, as demonstrated by the thirteen registrations listed in section 4 above. A trademark registration constitutes prima facie evidence of the validity of the mark. National Construction Rentals, Inc. v. T, Inc.,WIPO Case No. D2009-0147.
Where a disputed domain name includes an identical match to a complainant’s mark, a complainant has satisfied the burden of proving that the domain name is identical or confusingly similar under paragraph 4(a)(i) of the Policy. See, e.g., Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. Polygenix Group Co.,WIPO Case No. D2000-0163.
The disputed domain name is identical to Complainant’s registered trademarks. Accordingly, the Panel finds that the disputed domain name is identical or confusingly similar to a mark in which Complainant has rights. B. Rights or Legitimate Interests
Under the second element of paragraph 4(a) of the Policy, a complainant is required to present a prima facie case that the respondent lacks rights of legitimate interests in the disputed domain name. After the complainant has made a prima facie case, the burden of production shifts to the respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455.
Paragraph 4(c) of the Policy instructs that rights and legitimate interests can be demonstrated by Respondent if:
“(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.”
Complainant argues that Respondent lacks rights and legitimate interests in the disputed domain name. Complainant’s principal argument is that Respondent has made no use other than to redirect Internet traffic to Respondent’s own website. Further, Complainant argues that Respondent has no registered rights in the EXPANDEX mark and is simply taking advantage of Complainant’s mark and reputation. Importantly, Complainant states that Respondent is not an authorized or unauthorized reseller of its products, and Respondent has no license to use the EXPANDEX marks. This Panel finds that Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has not offered any counterarguments to Complainant’s point, but this Panel will weigh the evidence to determine if Complainant has met the requisite burden of proof.
No evidence in the record indicates that Respondent or its business has been commonly known by the term “Expandex.” Respondent’s use of the disputed domain name to redirect to Respondent’s own commercial website bars the possibility that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. Thus, for Respondent to show that it has rights or legitimate interests in the disputed domain name, Respondent must use the disputed domain name in connection with a bona fide offering of goods or services.
For this analysis, the Panel assumes as true Complainant’s assertion that Respondent is not an authorized reseller. Even if Respondent were an authorized reseller of Complainant’s products, Respondent would still fail to show a bona fide use of the EXPANDEX mark, under the applicable test. In Oki Data Americas, Inc. v. ASD, Inc., the panel stated that “[t]o be ‘bona fide,’ the offering must meet several requirements. Those include, at the minimum, the following:
- Respondent must actually be offering the goods or services at issue.
- Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods.
- The site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents.
- The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.”
WIPO Case No. D2001-0903 (citations omitted). Even in the most generous interpretation of Respondent’s relationship to Complainant, Respondent would still fail to assert use in connection with a bona fide offering of goods. Respondent is not selling the Expandex goods at issue, but rather a combination of the Expandex product and other products as dough mixes. Respondent does not use the website to sell exclusively the EXPANDEX trademarked goods, but rather Respondent’s own goods. Finally, Respondent does not disclose its relationship with Complainant. In total, Respondent fails under the Oki Data test.
On the balance, Complainant has satisfied its burden of proof. The Panel finds that Respondent lacks rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists circumstances that shall be evidence of registration and use of a domain name in bad faith, including, among other reasons,
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or…
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
Complainant argues that Respondent’s registration and use in bad faith is evidenced by Respondent’s demand to sell the disputed domain name for $3,000, when Complainant estimated the costs invested into the disputed domain name at $1,000. Complainant argues that this constitutes “valuable consideration in excess of” what Respondent actually paid to purchase and maintain the disputed domain name. Further, Complainant argues that Respondent’s use of the disputed domain name has been to intentionally attract Internet users to Respondent’s website for Respondent’s commercial gain. This use, Complainant argues, has created a likelihood of confusion with Complainant’s EXPANDEX mark, and Respondent has made no attempt to dissociate Complainant’s mark from Respondent’s goods.
As noted above, Respondent has not presented any arguments, but this Panel will weigh the evidence to determine if Complainant has sufficiently established Respondent’s bad faith.
The disputed domain name has and continues to direct Internet users to Respondent’s website, where Respondent offers products for its commercial gain. An Internet user attempting to go to would be confused when redirected to Respondent’s website, and that user would very likely be confused as to the source, sponsorship, affiliation, or endorsement of Respondent’s website by Complainant. Registration and use of a domain name to redirect Internet users to competitor or reseller websites constitutes bad faith under the Policy. See, e.g., E, Inc. v. Ult. Search, Inc.,WIPO Case No. D2001-1319; Nikon, Inc. and Nikon Corporation v. Technilab, Inc.,WIPO Case No. D2000-1774. Respondent’s use is a prototypical “bait and switch,” constituting bad faith use and registration under the Policy.
Further, Respondent’s demand for $3,000 is “valuable consideration in excess of the documented out-of-pockets costs,” as stated under paragraph 4(b)(i) under the Policy. “As long as the sum demanded amounts to financial gain, that in and of itself suffices.” Blue Cross and Blue Shield Association and Trigon Insurance Company, Inc. d/b/a Trigon Blue Cross Blue Shield v. InterActive Communications, Inc.,WIPO Case No. D2000-0788. Complainant’s estimate of Respondent’s out-of-pocket costs is supported by the evidence, and Respondent has not offered evidence to show otherwise. Therefore, Respondent’s demand constitutes “consideration in excess” of its costs and evidence Respondent’s bad faith.
On balance, Complainant has made a sufficient showing for the Panel to find Respondent’s bad faith 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.
Mark Partridge
Sole Panelist
Date: February 27, 2014
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