The Complainant is Frontier Distribution LLC of Norway, Iowa, United States of America (“United States”), represented by Nyemaster Goode, P.C., United States.
The Respondent is Dipak Jain of Pune, Maharashtra, India, self-represented. 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 February 22, 2018. On February 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 26, 2018, 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 March 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 26, 2018. The Response was filed with the Center on March 19, 2018.
The Center appointed John Swinson as the sole panelist in this matter on April 10, 2018. 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 is Frontier Distribution LLC of the United States. The Complainant produces and sells organic spices, seasonings and sauces under the trade mark SIMPLY ORGANIC, which are distributed in food stores throughout the United States. The Complainant also sells its products via a website at . According to the Complaint, the Complainant has continually used the SIMPLY ORGANIC trade mark since the 1990s.
The Complainant owns a number of registered trade marks for SIMPLY ORGANIC, including European Union Trade Mark number 2305597, filed on July 18, 2001 and registered on April 16, 2003 (the “Trade Mark”).
The Respondent is Dipak Jain, an individual who resides in India. The Respondent registered the Disputed Domain Name on October 11, 2017.
At the time the Complaint was filed, the Disputed Domain Name resolved to a website which provided information about organic foods and spices. That website also displayed a logo which was identical to the logo used by the Complainant. If a consumer wished to purchase products, they could click on a “Buy Now” button on this website, which would redirect the consumer to a website at the domain name at which competing organic products were offered for sale.
At the time of this decision, the Disputed Domain Name hosts a search directory which enables users to find doctors and other medical specialists in Jaipur, India. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions. Identical or Confusingly Similar
The Disputed Domain Name is confusingly similar to the Trade Mark. The Trade Mark is the dominant portion of the Disputed Domain Name. The addition of the geographic term “India” does not dispel the confusing similarity. Rights or Legitimate Interests
The Complainant has not authorized the Respondent to register the Disputed Domain Name. The Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services. At the time the Complaint was filed, no goods or services were available for purchase at the Disputed Domain Name. A consumer wishing to buy products would be redirected to a website at “www./simply-organic”. Meri Shoppe offers for sale products which compete with those offered by the Complainant.
The Respondent is misleadingly diverting consumers. The Respondent is using the Complainant’s logo on the website at the Disputed Domain Name. It is evident that the Respondent had the Complainant in mind when registering the Disputed Domain Name. Registration and Use in Bad Faith
The Respondent has registered the Disputed Domain Name in bad faith for the purpose of disrupting the Complainant’s business. The Respondent is not selling any goods via the website at the Disputed Domain Name. The Respondent is using the Disputed Domain Name to redirect Internet users to another website offering goods that compete with the Complainant’s products.
The Respondent is also improperly using the Complainant’s logo on the website at the Disputed Domain name. This proves that the Respondent had knowledge of the Complainant’s rights in the Trade Mark and that the Respondent intended to wrongfully profit from the goodwill associated with the Trade Mark.
The Complainant began using the Trade Mark decades before the Respondent registered the Disputed Domain Name, which further supports a finding of bad faith. B. Respondent
The Respondent makes the following contentions. Identical or Confusingly Similar
The Disputed Domain Name is not confusingly similar to the Trade Mark because it combines the Trade Mark with the word “India”. Rights or Legitimate Interests
The name of the Respondent’s shop is Simply Organic Food Store.
The website at the Disputed Domain Name provides information. No products or services are for sale. This is a fair use of the Disputed Domain Name under paragraph 4(c)(iii) of the Policy. Registration and Use in Bad Faith
The Respondent registered the Disputed Domain Name to provide customers of Pune city with information about the Respondent’s organic foods. The Respondent did not register the Disputed Domain Name for any other purpose. The Respondent does not receive revenue from the Disputed Domain name.
The Respondent does not compete with the Complainant. The Complainant creates its own products, whereas the Respondent has a small shop and sells products owned by others. The Respondent also sells a different range of products to those offered by the Complainant. There will be no customer confusion.
There is only one logo on the website at the Disputed Domain Name. To add another logo would be confusing to consumers. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(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 in bad faith.
The onus of proving these elements is on the Complainant. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Disputed Domain Name is confusingly similar to the Trade Mark. The Trade Mark is clearly recognizable within the Disputed Domain Name (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7), with the addition of a geographic term (being “India”). Where the relevant trade mark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. See WIPO Overview 3.0, section 4.8.
The Complainant succeeds on the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Complainant submits that the Respondent has no rights to or legitimate interests in the Disputed Domain Name for the following reasons:
- The Complainant has not authorized the Respondent to register the Disputed Domain Name.
- The Respondent was not selling any goods or services at the Disputed Domain Name, so there is no bona fide offering of goods or services.
- The Respondent was using the Disputed Domain Name to redirect consumers to a website at the domain name , which offered for sale competing products.
- The Respondent was misleadingly diverting consumers, as the Respondent was using the Complainant’s logo on the website at the Disputed Domain Name.
The Respondent submits that he has rights or legitimate interests in the Disputed Domain Name, as the name of his shop is Simply Organic Food Store, and he is providing information about products which is a fair use of the Disputed Domain Name under paragraph 4(c)(iii) of the Policy.
The Panel considers that, in the circumstances, the Respondent’s use of the website at the Disputed Domain Name prior to notice of the Complaint did not confer rights or legitimate interests. As submitted by the Complainant, based on the Respondent’s use of the Complainant’s logo on the website at the Disputed Domain Name, it is clear that the Respondent registered the Disputed Domain Name with the Complainant in mind. The Respondent used the Complainant’s reputation in the Trade Mark to redirect Internet users to a different online store (named Meri Shoppe, and not “Simply Organic Food Store”) at which competing organic products were sold. This is not a bona fide use of the Disputed Domain Name.
The Respondent provided no evidence to support his assertion that he owns a shop named “Simply Organic Food Store” (presumably for the purpose of establishing that he is commonly known by the Disputed Domain Name under paragraph 4(c)(ii) of the Policy).
Following notice of the Complaint, the Respondent has changed his use of the Disputed Domain Name. The website at the Disputed Domain Name is now a search engine which allows Internet users to find doctors and other medical specialists in Jaipur, India. This service is provided under the name “Docto”. This change in use reinforces the Panel’s finding that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
The Respondent has failed to rebut the prima facie case established by the Complainant. The Complainant succeeds on the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent has registered and is using the Disputed Domain Name in bad faith.
The Panel agrees with the Complainant’s submission that it is highly likely that the Respondent registered the Disputed Domain Name with the Complainant in mind. This is evident based on the fact that the Respondent displayed a logo which is identical to the Complainant’s logo on the website at the Disputed Domain Name. Before notice of the Complaint, the Respondent was using the Disputed Domain Name to redirect Internet users to a website at the domain name , at which Internet users could purchase organic products which compete with those offered by the Complainant.
This type of “bait and switch” move is evidence of bad faith registration and use under paragraph 4(b)(iv) of the Policy. It is irrelevant whether or not the Respondent receives revenue from the Disputed Domain Name, but in any case, the Panel considers it likely that the Respondent (or some other person) receives revenue from the online store to which the Disputed Domain Name previously redirected.
The fact that the Respondent changed his use of the Disputed Domain Name following notice of the Complaint does not alleviate the Respondent’s bad faith. The Respondent’s use of the Complainant’s reputation and goodwill in the Trade Mark to direct Internet users to a different service, even one which does not compete with the Complainant, is still evidence of bad faith registration and use under paragraph 4(b)(iv) of the Policy.
The Complainant succeeds on 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.
John Swinson
Sole Panelist
Date: April 19, 2018
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