Complainant is Bay Bread LLC d/b/a La Boulange of San Francisco, California, United States of America, represented by Focal PLLC of Seattle, Washington, United States of America.
Respondent is Tigran Mirzoyan of Bellevue, Washington, United States of America. 2. The Domain Name and Registrar
The disputed domain name (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 June 18, 2015. On June 18, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 19, 2015, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on June 26, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 16, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 22, 2015.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on July 23, 2015. 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 states that it “was acquired by Starbucks Corporation in 2012 and is now a subsidiary of Starbucks,” whose “stores nationwide now offer baked goods sold in connection with the LA BOULANGE Mark,” which includes the following registrations owned by Complainant (supported by appropriate evidence in the Complaint):
- United States Registration No. 3,662,779 for LA BOULANGE for use in connection with “[c]afes; serving of food and drinks, including sandwiches, pizza, salads, breads and pastries” (first used in commerce on June 30, 2001; registered on August 4, 2009).
- United States Registration No. 3,665,828 for LA BOULANGE CAFÉ & BAKERY design mark for use in connection with “[c]afes; serving of food and drinks, including sandwiches, pizza, salads, breads and pastries” (first used in commerce on November 30, 2005; registered on August 11, 2009).
Complainant further states that it sent a letter to Respondent on May 28, 2014, regarding Respondent’s use of the name “Ma Boulange” in connection with a bakery establishment in Federal Way, Washington. In its letter, a copy of which was provided as an annex to the Complaint, Complainant said that it “would like to discuss with you possible changes to your name that would distinguish your business from that of Bay Bread.”
Complainant provided as an annex to the Complaint an email from Respondent dated June 20, 2014, in which Respondent stated, “Ma Boulange Bakery started as an idea to expand our over 15 years of baking expertise into a café” and that “[w]hen Ma Boulange Bakery was opened, it had no intentions to interfere with Bay Bread.” Respondent’s email further stated, “The one problem we have is for our LED sign that hangs on the entrance, which is around 8 to 10,000 dollars. This amount maybe not a lot for a company as great as Starbucks is, unfortunately is a high expense for us at the time, and will hold us back significantly from growing as small family business, and I understand if it will take too long to change, it will be not be in the favor Starbucks as well. Majority of our marketing has already been stopped under the name of ‘Ma Boulange’ and most of our labeled paper goods etc., will be exhausted within a 4-6 month period.” Respondent’s email concluded, “I am looking forward to your response on what would be an acceptable solution or time frame to our sign.”
The Disputed Domain Name was created on March 21, 2015; and is being used in connection with a website for a “bakery,” “patisserie” and “cafe" in Federal Way, Washington. 5. Parties’ Contentions A. Complainant
Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights because “[t]he domain name differs from the Complainant’s LA BOULANGE mark merely in replacing the initial letter ‘L’ with the letter ‘M,’ and adding the descriptive term ‘BAKERY’”; “[p]anels have found that a difference of one letter between a trademark and a complainant’s domain name have a high likelihood of confusing similarity”; and “the use of a generic or descriptive word that describes the products or services with which the trademark is ordinarily used may exacerbate or increase the likelihood of confusion.”
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent registered the Domain Name in the year after Respondent acknowledged the dispute between the parties and was made aware of Complainant’s long-existing trademark rights”; “Respondent has not been ‘commonly known by the Domain Name’” because “[i]n his email to Starbucks, Respondent admitted that his bakery had, for more than 15 years, been known as the ‘Old Country Bakery’ and that he only considered using the ‘Ma Boulange’ name around 2013, when he wanted to expand on ‘15 years’ of baking”; and Respondent cannot “claim a ‘legitimate noncommercial or fair use,’ as he is using the Domain Name in connection with a commercial business experience.”
- The Disputed Domain Name was registered and is being used in bad faith because, inter alia,“Respondent registered and used the Domain Name only after receiving a cease-and-desist letter from Complainant, which has been considered evidence of bad faith by a number of panels”; “Respondent uses MA BOULANGE in a manner that emulates Complainant’s LA BOULANGE CAFÉ AND BAKERY AND DESIGN mark”; and “[b]oth Complainant and Respondent use their marks in connection with cafés and the sale of baked goods.” B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the 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) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the LA BOULANGE trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the LA BOULANGE trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “maboulangebakery”), as it is well-established that the Top-Level Domain (i.e., “.com”) may be disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2 (“The applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”).
This Panel agrees that the single letter difference between the prominent portion of the Disputed Domain Name (that is, “maboulange” instead of “laboulange”) is irrelevant for purposes of confusing similarity. See, e.g., Hunter Douglas Industries, BV, and Hunter Douglas Window Fashions, Inc. v. Erik Little,WIPO Case No. D2005-0460 (substitution of a single letter “is insignificant for purposes of confusing similarity” and “is widely known as ‘typosquatting’”). Further, this Panel agrees that the addition of the word “bakery” to the Disputed Domain Name “describes the products or services with which the trademark is ordinarily used” and, therefore, “may exacerbate or increase the likelihood of confusion.” Zions Bancorporation v. Ryan G Foo, PPA Media Services / Domain Admin, Whois Privacy Corp.,WIPO Case No. D2014-2278.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent registered the Domain Name in the year after Respondent acknowledged the dispute between the parties and was made aware of Complainant’s long-existing trademark rights”; “Respondent has not been ‘commonly known by the Domain Name’” because “[i]n his email to Starbucks, Respondent admitted that his bakery had, for more than 15 years, been known as the ‘Old Country Bakery’ and that he only considered using the ‘Ma Boulange’ name around 2013, when he wanted to expand on ‘15 years’ of baking”; and Respondent cannot “claim a ‘legitimate noncommercial or fair use,’ as he is using the Domain Name in connection with a commercial business experience.”
Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview 2.0, paragraph 2.1.
Accordingly, as a result of Complainant’s allegations and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
In this case, Complainant appears to argue that bad faith exists pursuant to paragraph 4(b)(iv), given that the Disputed Domain Name had been used in connection with a website for a “bakery,” “patisserie” and “cafe". Such use of a domain name in connection with a competitor’s website repeatedly has been held to constitute bad faith. See, e.g., Hilton Worldwide, Hilton Hotels Corporation, HLT Domestic IP LLC and HLT International IP LLC v. Steve Alek, Niagara Falls Corp,WIPO Case No. D2010-1063 (“[t]he inevitable conclusion is that Respondent registered the domain names in full knowledge of Complainants’ rights and reputation and in the expectation that it could profit from the identity or confusing similarity between those trademarks and the respective domain names”); and Wyndham Hotels and Resorts, LLC v. Key Hotel Group Inc. c/o Rupesh Patel, NAF Claim No. 1255806 (finding bad faith where “the disputed domain name is being used to advertise a third-party competitive… website”).
Accordingly, the Panel finds that Complainant has proven the third element 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.
Douglas M. Isenberg
Sole Panelist
Date: August 4, 2015
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