The Complainants are Simplot India Foods Private Limited of New Delhi, India, Simplot India LLC of Boise, Idaho, United States of America, and J.R Simplot Company of Boise, Idaho, United States of America.
The Respondent is Nitin Kumar of New Delhi, India. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 1, 2014. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. Also on October 1, 2014, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing 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 proceeding commenced on October 3, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 23, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 24, 2014. The Respondent sent two short emails to the Center on October 24and 25, 2014.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on October 29, 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
The first and second Complainants are subsidiaries of the third Complainant, J.R Simplot. The first Complainant was incorporated on July 25, 2012 under the name Comida Food Processing Private Limited, and changed its name to Simplot India Foods Private Limited, effective from October 29, 2012. The second Complainant Simplot India LLC is an entity incorporated in United States on September 7, 2011. The Complainants are collectively referred to as the "Complainant" in this proceeding.
The trademark SIMPLOT has been used worldwide by the Complainant and a list of its worldwide registered trademark applications are given here:
TRADEMARK
REGISTRTION NO.
COUNTRY
CLASS
GOODS
SIMPLOT
668478
Australia
29
Fresh Frozen Bakery goods, Frozen Vegetables
SIMPLOT
668479
Australia
31
Fresh Frozen Bakery goods
SIMPLOT
69605C
Bolivia
30
Frozen Sandwiches
SIMPLOT
69344C
Bolivia
29
Frozen Vegetables
SIMPLOT
818217235
Brazil
29 / 30
*
SIMPLOT and Design
256,103
Canada
*
Dehydrated Potatoes, Frozen Processed
SIMPLOT
252,709
Canada
Dehydrated Potatoes, Frozen Processed
SIMPLOT and Design
252709/256103
Canada
01
Fertilizers
SIMPLOT
801111
China
29
Sandwiches / Dairy Beverages
SIMPLOT
1102291
China
30
Frozen Vegetables
SIMPLOT
199527
Columbia
30
*
SIMPLOT`
1995528
Columbia
29
*
SIMPLOT
120599/ 120601
Costa Rica
29 / 30
Vegetables / Sandwiches
SIMPLOT
5233-95
Ecuador
29
*
SIMPLOT
3471/94
El Salvador
29
Vegetables
SIMPLOT
2147
European Union.
01,05, 29, 30, 31
Fertilizers / Insecticides / Frozen Vegetables / Entrees
SIMPLOT
100,230
Guatemala
29
Frozen Vegetables
SIMPLOT
92,204
Guatemala
30
Frozen Sandwiches
SIMPLOT
411326 / 411
Indonesia
29 / 30
Food Products
SIMPLOT
2096313
Japan
32
Frozen Fruit and Vegetables
SIMPLOT
191,046
Republic of Korea
07
Beef
SIMPLOT
192,234
Republic of Korea
02
Potato
SIMPLOT
192,045
Republic of Korea
07
Beef
SIMPLOT
192,239
Republic of Korea
02
Potatoes
SIMPLOT
372479
Mexico
29
Fresh Frozen Vegetables
SIMPLOT
429346
Mexico
01
Fertilizer
SIMPLOT
252250,51,52
New Zealand
29, 30, 31
*
SIMPLOT
122916
Norway
29, 30
*
SIMPLOT
085785/ 085787
Panama
29, 30
Frozen Vegetables
SIMPLOT
14969
Peru
29
Vegetables
SIMPLOT
434526
Switzerland
29
Meat, Fish, Poultry, Fruits, Vegetables, Eggs, Etc.
SIMPLOT
102009013
Taiwan, Province of China
01/05
Various Agricultural Chemicals / Products
SIMPLOT
798704
United States of America
10
*
SIMPLOT
846389
United States of America
46
Frozen Fruits and Vegetables
SIMPLOT
845264
United States of America
6
Sulphuric Acid, Phosphoric Acid, and Ammonium Phosphate
SIMPLOT
3803076
United States of America
1, 5, 6, 10, 26, 46
Chemicals used in the Manufacture of Animal Feed
SIMPLOT
3908133
United States of America
29
Processed Potatoes Processed Vegetables and Fruits, Frozen Fruits and Vegetables, Frozen Pre-packed Side Dishes
SIMPLOT
1186668
India
99
*
SIMPLOT
670,610
Taiwan, Province of China
25
Frozen Vegetables / Potatoes
SIMPLOT
899,299
United Kingdom of Great Britain and Northern Ireland
29
2012-09-12 Renewal Due
SIMPLOT
289,318
Uruguay
29, 30
Various
SIMPLOT
P-187-663
Venezuela
29
Frozen Vegetables
SIMPLOT
644/2012
Zambia
01
Chemicals used in Industry, Science
The Respondent registered the disputed domain name on December 31, 2013. 5. Parties' Contentions A. Complainant
The Complainant states that J.R. Simplot Company was founded in 1929 and is commonly referred to as "Simplot". According to the Complainant it is the largest privately owned food and agribusiness. It has operations in several countries including Australia, Canada, Mexico, Latin America, Republic of Korea and China. In the Forbes Magazine listing for 2013, the Complainant's group ranks as sixty-one among the privately owned companies. The Complainant states that it is the owner of the SIMPLOT trademark and also owns the domain names and .
The Complainant states that the Respondent has misappropriated its trademark by using it in the disputed domain name and that the Policy does not require a mark to be a registered mark as common law trademark rights are recognized under the Policy. The Complainant contends the disputed domain name is confusingly similar to a trademark in which it has rights. Due to extensive use, the trademark is distinctive and the Complainant alleges that another distinguishing feature of its mark is that it is not a dictionary word. Use of the trademark with the word "group" does not reduce the confusing similarly of the disputed domain name with the trademark argues the Complainant.
The Complainant states the Respondent has no rights or legitimate interests in the disputed domain name as no license or permission has been given to the Respondent to use the mark. Further, there could be no plausible explanation for registration of the disputed domain name with the trademark except for illegitimate purposes of tarnishing the trademark. The Respondent is not a prior user of the mark and "Simplot" is an invented word argues the Complainant. The Complainant argues that it needs to put forward a prima facie case, whereas it is for the Respondent to rebut the same. Use must be non-infringing use and trading on goodwill and reputation of the trademark owner is not considered legitimate use under the Policy.
The Complainant argues that the disputed domain name has been registered and is being used in bad faith and it was primarily registered to disrupt the Complainant's business. The Complainant further argues that before registering the disputed domain name, the Respondent ought to have conducted a search and been aware of the Complainant's rights in the SIMPLOT mark. The Respondent's use of the Complainant's trademark is to intentionally attracted users by creating a likelihood of confusion as to source, affiliation or endorsement of the Respondent's website. People are likely to believe the disputed domain name is sponsored or affiliated with the Complainant and consumers looking for the Complainant are likely to be misled by the disputed domain name. The Complainant requests for transfer of the disputed domain name. B. Respondent
The Respondent's emails on October 24 and 25, 2014 did not contain any facts or arguments which could be considered in this decision and did not reply to the Complainant's contentions.
The Respondent's email of October 25, 2014 is reproduced verbatim: "We are out of station. we will be revert on 28th October. We would to you apologize for delay response." 6. Discussion and Findings
To obtain the remedy of transfer of the disputed domain name, the Complainant has to establish three requirements set out under paragraph 4(a) of the Policy. These are:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent lacks rights or legitimate interests in the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith by the Respondent. A. Identical or Confusingly Similar
The first threshold requirement stipulated under paragraph 4(a) of the Policy is that, the Complainant has to establish the disputed domain name is confusingly similar to a trademark or a service mark in which it has rights.
The Complainant has adduced evidence that shows the SIMPLOT mark has been adopted and used internationally by the Complainant's group for an extensive period. On the basis of the evidence adduced and details of its trademark registrations in numerous countries, it is found the Complainant has established it has rights in the SIMPLOT mark.
The disputed domain name contains the SIMPLOT trademark along with the generic word "group". It is well established that a domain name which contains a generic word either suffixed or prefixed with a trademark is considered to be confusingly similar to the trademark, as the trademark is the dominant part of the domain name and the generic terms that are prefixed or suffixed to it do not distinguish the domain name from the mark.
The word "group", in the present instance, along with the Complainant's mark, is found to increase the confusing similarity to the mark due to the reason that the Complainant has established in this proceeding that it consists of a group of companies. See for instance Intel Corporation v. The Pentium Group,WIPO Case No. D2009-0273 (), where the panel in that case had found the word "group" along with the PENTIUM mark did not distinguish the domain name from the trademark, as the word "group" is just a descriptive term and furthermore the confusing similarity may be exacerbated by creating an illusion of a company or group structure that does not belong to the respondent. Similarly, in the present case the word group along with the Complainant's mark is likely to be associated with the Complainant's business due to its well-established rights in the SIMPLOT trademark, whereas there is nothing on record to suggest that the Respondent is part of a group of companies.
The Complainant has accordingly established the first requirement under paragraph 4(a) of the Policy that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The second element under paragraph 4(a) of the Policy requires the Complainants to make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides circumstances by which the Respondent can demonstrate rights or legitimate interests in the disputed domain. These are:
(i) The Respondent has used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services;
(ii) The Respondent has been commonly known by the disputed domain name; and
(iii) The Respondent is making legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain or to mislead and divert consumers or tarnish the trademark of the Complainants.
The term "demonstrable preparations" in paragraph 4(c)(i) is subject to interpretation of the expression "bona fide". See Scania CV AB v. Leif Westlye,WIPO Case No. D2000-0169. The Respondent appears to be a shareholder and director of a company named Simplot Advisors India Private Limited. It is well established that the circumstances of use of the domain name under paragraph 4(c)(i) refers to clear cases of non-infringing use by the Respondent. Whether the Respondent had adopted the business name in good faith, as an honest adopter without any prior knowledge of the Complainant's mark is a complex issue of fact. Within the circumstances of the present dispute, the Panel can only determine whether there was an honest adoption of the name in connection with the disputed domain name. Based on the material presented in this proceeding, the Panel finds it is unlikely that the Respondent was unaware of the pre-existing rights of the Complainant's mark when he registered the disputed domain name. The Respondent ought to have known of the prior rights of the Complainant and its group of companies in connection with the trademark.
The Respondent has not responded or filed any evidence in this proceeding to show or justify honest adoption of the name and the registration of the disputed domain name. The Panel notes that the Respondent has hosted a website in connection with what appears to be a business related to website development, mobile applications and other e-commerce services. Whether the disputed domain name is presently being used in connection with a business or not, has not been established, as the Respondent has not provided any information or evidence about the business and the reasons for using the mark of the Complainant.
In trying to determine whether the Respondent has rights or legitimate interests in the disputed domain name, some relevant factors considered by previous panels are: prior trademark rights of the parties, the length of use and the fame associated with a well-known mark, likelihood of respondent's knowledge when adopting the name or mark or circumstances to show that the Respondent knew or had knowledge of the Complainant's mark. See Chip Merchant, Inc. v. Blue Star Electronics, d/b/a Memory World,WIPO Case No. D2000-0474. Given the Complainant's preexisting rights in the SIMPLOT trademark, which has been used extensively by the Complainant internationally, the circumstances in the present case indicate that the Respondent was not acting in pursuance of any rights or legitimate interests when the disputed domain name was registered. In the Panel's view, such use of the disputed domain name, under the circumstances of the present case, does not show the Respondent's rights or legitimate interest in the disputed domain name under paragraph 4(c) of the Policy.
For the reasons discussed, the Panel is satisfied that the Complainant has made a prima facie case that the Respondent has no rights and legitimate interests in the disputed domain name as required under the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The third element under paragraph 4(a) of the Policy requires the Complainant to establish that the disputed domain name has been registered in bad faith and is being used in bad faith.
Under paragraph 4(b) of the Policy, some circumstances of bad faith registration and use are enumerated. However, the circumstances described in paragraph 4(b) of the Policy are examples of bad faith registration and use and it does not limit finding circumstances other than those described at paragraph 4(b) that amount to bad faith registration and use. Fox News Network, L.LC. v. Kenneth A. Young,WIPO Case No. D2003-0407. The fact that the SIMPLOT trademark has been popularized and used extensively by the Complainant internationally for decades and the Respondent uses this mark in the disputed domain name with no conceivable or reasonable explanation is an indication of bad faith. See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163.
Under paragraph 4(b)(iv) of the Policy, where circumstances suggest there is deliberate and misleading use of another's trademark for the purpose of diverting Internet users looking for sites associated with the owner of that trademark to the respondent's website, bad faith registration and use can be found. By using the trademark in the disputed domain name the Respondent has intentionally attempted to attract Internet users to his website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement. The Panel finds the circumstances of this case show the disputed domain name was registered by the Respondent with an intention to attract Internet users to the Respondent's website by creating a like hood of confusion with the Complainant's well-known mark as to the source, sponsorship, which is recognized as bad faith registration and use under paragraph 4(b)(iv) of the Policy.
For the reasons discussed, the Panel finds that the Complainant has established the disputed domain name was registered in bad faith and is being used in bad faith. 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.
Harini Narayanswamy
Sole Panelist
Date: November 12, 2014
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