The Complainant is Blue Apron, LLC of New York, New York, United States of America (“USA”), represented by Cowan, DeBaets, Abrahams & Sheppard, LLP, USA.
The Respondent is Tulip Trading Company of Charlestown, Saint Kitts and Nevis. 2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with Key-Systems GmbH dba (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 26, 2017. On May 29, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 30, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 22, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 23, 2017.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on June 30, 2017. 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 was established in Delaware, USA and is a subscription-based meal delivery service that provides customers with original recipes and pre-portioned ingredients needed to prepare such recipes at home. The Complainant holds registered rights in the BLUE APRON trade mark pursuant to its USA trade mark registrations, the earliest of which was registered on October 15, 2013.
The Respondent registered the Disputed Domain Name on February 5, 2015. The Disputed Domain Name resolves to a parking page with a number of sponsored links, including links to both the Complainant and competitors of the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarized as follows:
(a) Since 2012, the Complainant has continuously used the BLUE APRON trade mark in relation to its business, and holds USA trade mark registrations for its BLUE APRON trade mark (registration numbers 4417957, 4919034 and 4956738). Its earliest trade mark registration was on October 15, 2013. The Complainant has also filed further applications for registration of the BLUE APRON trade mark in the USA and several countries around the world.
(b) The Complainant owns several domain names incorporating the BLUE APRON trade mark, including , and . The Complainant has extensively promoted, advertised and used its BLUE APRON trade marks on its websites and in television advertisements.
(c) The Disputed Domain Name is confusingly similar to the Complainant’s BLUE APRON trade mark, save that the letter “e” has been replaced with the letter “r”, which are adjacent to each other on standard computer keyboards. Domain names that constitute typosquatting are confusingly similar as “the sole attraction of the domain name is their confusing similarity to famous marks” (Go Daddy Software, Inc. v. Daniel Hadani,WIPO Case No. D2002-0568; Wachovia Corporation v. Peter Carrington,WIPO Case No. D2002-0775; AltaVista Company v. Saeid Yomtobian,WIPO Case No. D2000-0937; Accenture Global Services Limited v. Tulip Trading Company,WIPO Case No. D2015-1520).
(d) Several UDRP decisions have previously been issued against the Respondent in relation to its history of registering domain names that are derived from well-known trade marks of third parties to whom it has no connection (National Grid Electricity Transmission Plc and NGrid Intellectual Property Limited v. Tulip Trading Company,WIPO Case No. D2016-0036; A.S. Roma S.p.A., A.S.R. Media & Sponsorship S.r.l. v. Tulip Trading Company Limited,WIPO Case No. D2015-1977; and Accenture Global Services Limited v. Tulip Trading Company, supra). In Global Services Limited v. Tulip Trading Company, supra, the panel found that the Respondent had committed typo-squatting by replacing one letter of the complainant’s trade mark with another letter in the domain name, which are located in close proximity to each other on a standard computer keyboard, which would likely result in confusion. In this case, the Respondent has replaced the “e” in the BLUE APRON trade mark with an “r” in the Disputed Domain Name. Any inadvertent misspelling by a user of the Complainant’s BLUE APRON trade mark whilst searching for their website, would direct such user to the website to which the Disputed Domain Name resolves and inevitably lead to confusion on the part of such user as to its association with the Complainant. The Respondent is also taking advantage of the users’ initial interest confusion for its own commercial advantage.
(e) The Respondent has no rights or legitimate interests in the Disputed Domain Name and is not using it for any bona fide or other fair purpose. The Respondent has not been authorized by the Complainant to use the BLUE APRON trade marks or to register any domain names incorporating the BLUE APRON trade marks. There is no evidence that the Respondent is or has ever been commonly known by the Disputed Domain Name. There is also no evidence that the Respondent has ever operated any bona fide or legitimate business under the Disputed Domain Name and it is not making any noncommercial or fair use of the Disputed Domain Name. The Disputed Domain Name directs users to a parking page that displays sponsored links to third party websites. The Respondent likely earns pay-per-click revenue in relation to the sponsored links. The parking page includes links to the Complainant’s website and to websites of the Complainant’s competitors (e.g., “” and “”). The Respondent is therefore using the Disputed Domain Name to misdirect users (who are seeking to access the Complainant’s official website) to the parking page in order to earn pay-per-click revenue. Such use does not confer any legitimate interests or rights in the Disputed Domain Name to the Respondent.
(f) The Respondent must have been aware of the Complainant and its BLUE APRON trade marks at the time it registered the Disputed Domain Name. This is because the Disputed Domain Name incorporates the Complainant’s BLUE APRON trade mark almost in its entirety, and resolves to a parking page that includes sponsored links to meal delivery services, recipes, meals, diets and other food-related topics, which are all connected to the Complainant’s business. The Respondent is also deemed to have constructive knowledge of the Complainant’s BLUE APRON trade marks based on the Complainant’s USA registrations for the BLUE APRON trade mark. The Respondent’s passive holding of the Disputed Domain Name for use as a parking page does not negate the possibility of bad faith registration and use. The use of the Disputed Domain Name to misdirect users to competitors of the Complainant is further evidence of bad faith, and could cause harm to the Complainant’s business.
(g) The Respondent registered the Disputed Domain Name with the intent of misdirecting users to the resulting parking page and to competitors of the Complainant, thereby amounting to bad faith use. Other panelists have previously found that the Respondent has engaged in bad faith conduct by creating a likelihood of confusion with the relevant complainant’s trade mark. B. Respondent
The Respondent did not reply to the Complainant’s contentions.
The fact that the Respondent has not submitted a Response does not automatically result in a decision in favour of the Complainant. However, the failure of the Respondent to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403). 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(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 by the Respondent in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the BLUE APRON trade mark, based on its registrations in USA, the earliest of which was obtained on October 15, 2013.
It is a well-established principle that a domain name which contains a common or obvious misspelling of a trade mark will normally be found to be confusingly similar to such trade mark, where the misspelled trade mark remains the dominant or prominent element of the domain name (Fuji Photo Film U.S.A., Inc. v. LaPorte Holdings,WIPO Case No. D2004-0971). In this case, the only difference between the Disputed Domain Name and the Complainant’s BLUE APRON trade mark is the use of the letter “r” instead of the letter “e” in the Disputed Domain Name, which adds no distinctive element and appears to be a clear case of typo-squatting. The Panel therefore finds that the Disputed Domain Name is confusingly similar to the Complainant’s trade mark.
Furthermore, in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the generic Top-Level Domain extensions, in this case “.com”, may generally be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762).
In light of the above, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s BLUE APRON trade mark, and paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel accepts that the Complainant registered and began using the BLUE APRON trade mark many years before the Disputed Domain Name was registered by the Respondent, and the Complainant has never authorised the Respondent to use its trade mark. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to prove that it has rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response to the Complainant’s contentions, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to them of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if they have acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Respondent has not provided any evidence to demonstrate that it has become commonly known by the Disputed Domain Name, or a name corresponding to it. The Disputed Domain Name resolves to a parking page which contains a number of sponsored links, including links to both the Complainant and competitors of the Complainant. It is reasonable to infer that the Respondent earns pay-per-click revenue in relation to such sponsored links. While parking pages may be permissible in some circumstances, under section 2.9 of WIPO Overview 3.0, a parking page would not by itself confer rights or legitimate interests in a domain name. This is especially the case where a disputed domain name was registered with a trade mark owner’s mark in mind in the hope and expectation that confused Internet users searching for the trade mark owner will be directed to the respondent’s parking page for commercial gain. Such activity does not provide a legitimate interest in that domain name under the Policy (Owens Corning v. NA,WIPO Case No. D2007-1143).
In this case, the parking page to which the Disputed Domain Name resolves includes direct references and pay-per-click links to the Complainant’s website and to the websites of the Complainant’s competitors. Therefore, the Panel finds that the Respondent registered the Disputed Domain Name to trade off the goodwill of the Complainant’s BLUE APRON trade mark in order to increase its pay-per-click revenue, which cannot amount to a legitimate interest or right.
The Panel finds that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
The Complainant began using the BLUE APRON mark in 2012, and first obtained a trade mark registration for the BLUE APRON trade mark in 2013, which was prior to the registration of the Disputed Domain Name. It also cannot be mere coincidence that the related searches and sponsored links that appear on the parking page to which the Disputed Domain Name resolves include links and references to not only the Complainant, but also to food delivery, recipes, etc, which are related to the Complainant’s line of business. The sponsored links on the Respondent’s parking page also directs users to competitors of the Complainant (see Villeroy & Boch AG v. Whois Data Shield/Hong Kong Names LLC.,WIPO Case No. D2008-1300 and Nikon, Inc. and Nikon Corporation v. Technilab, Inc.,WIPO Case No. D2000-1774). The Panel finds that in the absence of any evidence to the contrary, the Respondent must have registered the Disputed Domain Name with the Complainant’s mark in mind, in order to misdirect Internet users who are searching for the Complainant to the Respondent’s parking page.
Using a domain name to intentionally attract Internet users to a website for commercial gain, in an effort to trade on the Complainant’s goodwill, is evidence of bad faith registration and use under the Policy (Adobe Systems Incorporated v. Domain OZ,WIPO Case No. D2000-0057). The Panel is of the opinion that this is a clear case of typo-squatting and that the Respondent deliberately registered a domain name with a slight misspelling with the intent to divert Internet users from the Complainant’s website to the Respondent’s parking page, and constitutes bad faith registration and use.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy is satisfied. 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.
Gabriela Kennedy
Sole Panelist
Date: July 11, 2017
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