The Complainants are Snack Brands Industries Pty Ltd and Snack Brands Foods Pty Ltd (jointly trading as Snack Brands Australia), and Snack Foods Pty Ltd, all of Bella Vista, New South Wales, Australia, represented by King & Wood Mallesons, Australia.
The Respondent is Ali Uzzell (formerly known as Imraaz Ali), Snack Brands Australia, of New South Wales, Australia, self represented. 2. The Domain Names and Registrars
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”).
The disputed domain name is registered with Gandi SAS (the “Registrar”).
The disputed domain name is registered with PlanetDomain Pty Ltd now trading as Netregistry (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 9, 2017. On October 9, 2017, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On October 10, 2017, the Registrar PlanetDomain Pty Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On October 10, 2017, the Registrar Gandi SAS transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On October 11, 2017, the Registrar PDR Ltd. d/b/a PublicDomainR 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 October 16, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 5, 2017. The Center notified the Respondent’s default on November 6, 2017. The Response was filed late with the Center on November 7, 2017.
The Center appointed Andrew F. Christie as the sole panelist in this matter on November 14, 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 Complainants are members of the Snack Brands group of companies in Australia. Snack Brands Industries Pty Ltd and Snack Brands Foods Pty Ltd (hereafter referred to jointly as the “First Complainant”) trade as a partnership under the registered business name “Snack Brands Australia”. Snack Foods Pty Ltd (hereafter referred to as the “Second Complainant”) is the owner of the relevant trademarks used by the Snack Brands group in Australia. The First Complainant and the Second Complainant share an ultimate holding company, JG Summit Holdings, Inc, and a head office located in Bella Vista, Sydney, Australia.
The First Complainant is an Australian manufacturer and distributor of snack food products well-known in Australia, including products sold under the brands “CC’s”, “Thins”, “Kettle chips” and “Cheezels”. The Second Complainant (or its predecessor in title) is the owner of an Australian trademark registration for the word trademark SNACK BRANDS AUSTRALIA and an Australian trademark registration for a word and device trademark that includes the words “snack brands Australia”, both of which were registered on August 2, 1999 (hereafter referred to jointly as the “SNACK BRANDS AUSTRALIA trademarks”, Australian Registration Numbers 802201 and 802202). The Complainants have traded under and/or used the SNACK BRANDS AUSTRALIA trademarks extensively in Australia since at least 2008 in relation to their business and their snack food products. The First Complainant also owns a business name registration for Snack Brands Australia, and trades as, and is known by, the name “Snack Brands Australia” or its abbreviation, “Snack Brands”. The First Complainant has registered, and uses in the course of its business, the domain name .
The Complainants are among Australia’s largest chip manufacturers, with annual sales of over AUD 300 million. The Complainants’ business was valued at AUD 600 million when it was acquired by Philippines food company Universal Robina Corporation in 2016.
The disputed domain name was registered on May 30, 2017, the disputed domain name was registered on June 5, 2017, and the disputed domain name was registered on August 31, 2017. As at August 30, 2017, the disputed domain name resolved to a website displaying hyperlinked headings relating to snack foods and snack food companies, including “Healthy Snack Chips”, “URC Snack Foods” and “Pringles Snacks”. As at September 28, 2017, the disputed domain name did not resolve to a website, and the domain name resolved to a parked domain page. 5. Parties’ Contentions A. Complainant
The Complainants contend that each of the disputed domain names is confusingly similar to the SNACK BRANDS trademarks, to the First Complainant’s business name and to the First Complainant’s trading name, because: (i) the disputed domain name consists of the Second Complainant’s registered word trademark SNACK BRANDS AUSTRALIA, or the First Complainant’s registered business name or trading name, in its entirety; (ii) the disputed domain names and consist of the Second Complainant’s registered word trademark SNACK BRANDS AUSTRALIA without the word “Australia”, which does not prevent them being confusingly similar as the Complainants are known by the name “Snack Brands”, and this is the name promoted by the Complainants through the registered domain name of their official website at ; and (iii) an Internet user seeing the term “snackbrands” in these two disputed domain names would likely be confused as to the ownership of them and would assume that they lead to a website connected to the Complainants.
The Complainants contend that the Respondent has no rights or legitimate interests in respect of the disputed domain names because: (i) the Respondent is not using them in connection with a bona fide offering of goods or services, as the disputed domain name resolves to a website with hyperlinked headings and advertisements to well-known snack foods offered by the Complainants’ competitors and the Complainants’ parent company, Universal Robina Corporation. These links either compete with, or capitalize on, the reputation and goodwill of the Complainants, their business names, trading name or the SNACK BRANDS AUSTRALIA trademarks, and are likely to mislead Internet users into thinking that the website is associated with, or authorized by, the Complainants; (iii) the use of a domain name which comprises pay-per-click links does not represent a bona fide offering; (iv) the disputed domain name does not resolve to a website, and the disputed domain name is a parked domain; (v) the Respondent is not known by the disputed domain names, and has not acquired any rights to, or interests in, the disputed domain names; (vi) there is no affiliation between the Complainants and the Respondent to justify the Respondent’s use of the Second Complainant’s SNACK BRANDS AUSTRALIA trademarks or the First Complainant’s business name or trading name, in the disputed domain names; (vi) the Complainants have not licensed or otherwise permitted the Respondent to use their business name or trading name or the SNACK BRANDS AUSTRALIA trademarks, or any variations thereof; (vii) the Respondent is not making legitimate noncommercial or fair use of the disputed domain names; (viii) on numerous occasions, the Respondent has falsely claimed to be the owner of the Complainant’s business, or to register or gain control over the Complainants’ business names and websites, by, amongst other things, trying to edit the Complainants’ business name registration details, filing a trademark application in Australia for the words “Snackbrands Australia” in the name of “Snack Brands Australia” and claiming on social media platforms to be the owner of Snack Brands Australia; (ix) the Respondent has a practice of registering multiple business names containing the names of well-known brands or companies, including Woolworths Group PLC, Disneyland Paris and Alibaba Group Corporations, in which he has no apparent rights or legitimate interests; and (x) the Respondent has not complied with the Complainants’ demands as per correspondence from their solicitors to the Respondent and his solicitors, indicating that the Respondent has intent for commercial gain to misleadingly divert consumers or to tarnish the SNACK BRANDS trademarks.
The Complainants contend that the disputed domain names were registered and are being used in bad faith because: (i) the Respondent has registered them as part of a concerted campaign to impersonate the Complainants and mislead third parties into thinking that the Respondent owns, controls or is otherwise associated with the Complainants; and (ii) the Respondent’s fraudulent practice of claiming ownership of the Complainants or their business is designed to disrupt the Complainants’ business which is a form of bad faith. B. Respondent
The Respondent sent an email to the Center after the due date for submitting a response. This email contained numerous statements, of which only a few appeared to be addressed to the substance of the Complaint. The essence of the email stated: “you guys need to do your check with Asic registry before accepting complains (sic). … Please note from the company you stated has complained against me iam (sic) the director and sole owner of it and till today I have not threatened or complained about not using my domains. So once again hopefully you do understand the situation as we are the owners of few big names … Pepsico Inc Amplify Snack Brands inc The Coca-Cola Company. …” 6. Discussion and Findings A. Identical or Confusingly Similar
When the top-level domain identifier “.com” is ignored (as is appropriate in this case), the disputed domain name consists solely of the Second Complainant’s registered word trademark SNACK BRANDS AUSTRALIA. Accordingly, the Panel finds that the disputed domain name is identical to a trademark in which the Complainants, being part of the same corporate group, have rights.
The disputed domain names and consist of the entirety of the Second Complainant’s registered word trademark SNACK BRANDS AUSTRALIA minus the word “Australia”. The Panel finds the omission of the word “Australia” does not lessen the inevitable confusion of these two disputed domain names with the Second Complainant’s registered trademark, as the dominant part of the disputed domain names is “snack brands” which refers to the First Complainant’s registered business name, under which it trades and in which it has developed substantial reputation, in its abbreviated form. The Panel finds that the disputed domain names and are confusingly similar to a trademark in which the Complainants, being part of the same corporate group, have rights. B. Rights or Legitimate Interests
The Respondent is not a licensee of, or otherwise affiliated with, the Complainants, and has not been authorized by the Complainants to use the Second Complainant’s SNACK BRANDS AUSTRALIA trademarks. The Respondent has not provided any convincing evidence that he has been commonly known by, or has made a bona fide use of, the disputed domain names, or that the has, for any other reason, rights or legitimate interests in any of the disputed domain names. The Respondent’s assertion that he is the director and sole owner of the Complainants is fanciful.
The evidence provided by the Complainants shows that one of the disputed domain names, , resolved to a website with hyperlinked headings and advertisements to well-known snack foods offered by one of the Complainants’ competitor. The evidence provided by the Complainants about the disputed domain names and shows that they did not resolve to a website, or that they resolved to a parking page, respectively, and are therefore not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use.
For all of the above reasons, the Panel finds that the Respondent has no rights or legitimate interests in any of the disputed domain names. C. Registered and Used in Bad Faith
The disputed domain names were registered a number of years after the Second Complainant registered its SNACK BRANDS AUSTRALIA trademarks. The evidence on the record provided by the Complainants with respect to their use of the SNACK BRANDS AUSTRALIA trademarks, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time of registration of the disputed domain names, the Respondent knew of the Second Complainant’s registered trademarks and knew that it had no rights or legitimate interests in the disputed domain names.
The evidence on the record provided by the Complainants with respect to the Respondent’s use of the disputed domain name indicates that the Respondent has used it to attract, for commercial gain, Internet users to a website by creating confusion in the minds of the public as to an association between the website and the Complainants. The evidence on the record provided by the Complainants demonstrates that on numerous occasions the Respondent has falsely claimed to be the owner of the Complainants’ business, has sought to register or gain control over the Complainants’ business names and websites, and has registered multiple business names of well-known brands or companies in which he has no apparent rights or legitimate interests. This evidence supports the conclusion that the Respondent has registered the disputed domain names as part of a concerted campaign to impersonate the Complainants and mislead third parties into thinking that the Respondent owns, controls or is otherwise associated with the Complainants.
For all of the above reasons, the Panel finds that each of the disputed domain names has been registered 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, and in accordance with the remedy requested by the Complainants, the Panel orders that the disputed domain names , and be cancelled.
Andrew F. Christie
Sole Panelist
Date: November 28, 2017
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