The Complainant is Intercontinental Great Brands LLC of East Hanover, New Jersey, United States of America (“United States”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Abubakar Mirza, Wish Technologies of Karachi, Pakistan. 2. The Domain Name and Registrar
The disputed domain name (the “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 18, 2018. On October 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 19, 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 October 30, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 19, 2018. The Respondent submitted two email communications to the Center on November 2 and November 6, 2018. On November 23, 2018, the Center notified the Parties that it would proceed to appoint a panel.
The Center appointed Dawn Osborne as the sole panelist in this matter on December 3, 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 the owner of the trade mark OREO registered, inter alia, in the United States and Pakistan for food products (first registration in the United States on August 12, 1913, registration number 0093009). The Complainant also has a trade mark registered in the United States for a logo representation of one of its round biscuits from June 27, 1995 (registration number 1037999).
The Domain Name registered on January 7, 2018 has been used to host a picture similar to the Complainant’s registered biscuit logo. The Respondent offered the Domain Name for sale to the Complainant in the email of November 2, 2018. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarised as follows:
The Complainant is the owner of the trade mark OREO registered, inter alia, in the United States and Pakistan for food products (first registration in the United States in 1913). The Complainant also has a trade mark registered in the United States for a representation of one of its round biscuits from 1995. The Complainant owns the domain name .
The Domain Name registered in 2018 is confusingly similar to the Complainant’s trade mark incorporating it in its entirety and adding only the generic word “bit” and the generic Top-Level Domain (“gTLD”) “.com” which do not prevent confusing similarity.
The Respondent is not commonly known by the Domain Name and is not authorised by the Complainant. Use of the site to show a representation of a biscuit similar to the Complainant’s biscuit logo trade marked by the Complainant, is passing off and is not a bona fide offering of goods or services or a legitimate noncommercial fair use. It is bad faith registration and use. The use of the similar biscuit logo to the Complainant shows that the Respondent is aware of the Complainant and its business, it also will mislead customers to think the site attached to the Domain Name is associated with the Complainant. This is causing confusion for commercial gain contrary to Policy, paragraph4(b)(iv). The Respondent did not reply to the Complainant’s cease-and-desist letter. B. Respondent
The Respondent did not reply to the Complainant’s contentions.
In the emails to the Center during the proceedings the Respondent said it had ceased use of the Domain Name as it had been registered for cryptocurrency services for a United States client which are banned in Pakistan where the Respondent is based. The Respondent also offered to sell the Domain Name to the Complainant. 6. Discussion and Findings A. Identical or Confusingly Similar
The Domain Name combines the Complainant’s OREO mark (registered in the United States and Pakistan for food products with first use in 1912), the generic term ‘‘bit” and the gTLD “.com”.
The addition of the generic term “bit” and the gTLD “.com” does not serve to prevent the Domain Name from being confusingly similar to the Complainant’s mark.
Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark in which the Complainant has rights for the purpose of the Policy. B. Rights or Legitimate Interests
The Respondent does not appear to be commonly known by the Domain Name. The Complainant has not authorised the Respondent to use the Complainant’s mark. The use of the Domain Name is commercial and so cannot be legitimate noncommercial use.
The Respondent has used the site attached to the Domain Name to display a round picture similar to the Complainant’s biscuit logo which is registered as a trade mark. This indicates that the Respondent was aware of the significance of the Oreo name and the Complainant’s rights at the time of registration. The use of the Complainant’s OREO and biscuit logo registered marks which have a reputation for food products in relation to services not connected with the Complainant is not fair as the site does not make it clear that there is no commercial connection with the Complainant. As such it cannot amount to the bona fide offering of services.
The Respondent has not answered the Complainant’s contentions and has not provided any legitimate reason why it should be able to use the Complainant’s trade marks in this way. As such the Panel finds that the Respondent does not have rights or a legitimate interests in the Domain Name and that the Complainant has satisfied the second limb of the Policy. C. Registration and Use in Bad Faith
It seems clear that the use of the Complainant’s mark in the Domain Name and a picture very similar to the Complainant’s biscuit logo which is registered as a trade mark and resembles the Complainant’s biscuit products would cause people to associate the website at the Domain Name with the Complainant and its business and products. The use of the Complainant’s logo shows the Respondent is aware of the Complainant and its business. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the website.
The Domain Name has also been offered for sale to the Complainant, which is further evidence of bad faith.
As such, the Panel believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb 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 Domain Name be transferred to the Complainant.
Dawn Osborne
Sole Panelist
Date: December 4, 2018
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