The Complainant is Kettle & Barebells Functional Food AB, Sweden, represented by SILKA Law AB, Sweden.
The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyP) / Nfor, Nfor Samuel Ngwa Ngwa, Japan. 2. The Domain Name and Registrar
The disputed domain name is registered with Hostinger, UAB (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 2, 2019. On September 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 3, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 4, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on September 5, 2019.
The Center verified that the Complaint together with the amendment to 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 September 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 1, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 2, 2019.
The Center appointed Peter Burgstaller as the sole panelist in this matter on October 4, 2019. 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 provides functional food and offers milk protein enriched snacks and alternatives to breakfast and desserts in many countries under the mark BAREBELLS. The Complainant’s headquarter is in Stockholm, Sweden.
The Complainant has registered the mark BAREBELLS as trademark throughout the world (International Registration No. 1386703) based on the EU wordmark BAREBELLS (Registration No. 016487671) registered on September 14, 2017. The trademarks are registered in the classes 5, 29, 30, 32 and 35 of the Nice Classification (Annex 3 and 4 to the Complaint).
The Respondent sent emails to third parties by using the disputed domain name in connection with the Chief Commercial Officer’s name of the Complainant (Annex 5 to the Complaint).
The Respondent has registered the disputed domain name on August 13, 2019, (Annex 1 to the Complaint) by using a privacy/proxy registration service.
The above mentioned trademark registrations of the Complainant predate the registration of the disputed domain name (Annex 3 to the Complaint). 5. Parties’ Contentions A. Complainant
The disputed domain name is confusingly similar to the Complainant’s registered BAREBELLS trademarks. The Complainant is the owner of various word and figurative trademark registrations throughout the world which contain the word “barebells”.
The Respondent is not affiliated with the Complainant in any way and has not been authorized by the Complainant to use or register its BAREBELLS trademarks or to seek registration of any domain name incorporating the aforesaid trademarks.
The Respondent has registered the disputed domain name in bad faith since at the time of registration of the disputed domain name, the Respondent was clearly aware of the Complainant and its trademarks. Moreover, the Respondent used a privacy or proxy registration service in a manner which indicates bad faith registration.
The Respondent sent emails in the name of the Complainant’s Chief Commercial Officer; the Respondent therefore is conducting “fraud” which can never confer rights or legitimate interests on a respondent and constitutes bad faith usage. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The disputed domain name entirely incorporates and reproduces the Complainant’s wordmark BAREBELLS; the disputed domain name only differs from the Complainant’s distinctive trademarks inasmuch as it adds the suffix “-se”. However, it is this Panel’s view that this does not eliminate confusing similarity with the trademarks of the Complainant since the disputed domain name remains visually, aurally and conceptually highly similar with the Complainant’s trademarks. Moreover, the suffix “-se” is the Internet country code top-level domain (ccTLD) for Sweden where the Complainant’s headquarter is located; this also leads this Panel to the conclusion that this suffix is not suitable to exclude confusing similarity with the Complainant’s trademarks.
It has also long been established under UDRP decisions that generic Top-Level Domain (“gTLD”) cannot typically negate identity or confusing similarity where it otherwise exists, as it does in the present case. When assessing identity or confusing similarity under the first element of the Policy, the gTLD may be ignored (see section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, previous panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see WIPO Overview 3.0, section 2.1).
In the present case the Respondent failed to submit a Response. Considering all of the evidence in the Complaint (especially with regard to the Annexes presented by the Complainant) and the Complainant’s contentions that the Respondent has no rights or legitimate interests in the disputed domain name, that the Respondent has no connection or affiliation with the Complainant and the Respondent has not received any license or consent, express or implied, to use the Complainant’s trademarks BAREBELLS in a domain name or in any other manner lead the Panel to the conclusion that the Complainant has made out an undisputed prima facie case so that the conditions set out in paragraph 4(a)(ii) of the Policy have been met by the Complainant.
The lack of rights or legitimate interests is also purported by the fact that the use of a domain name for illegal activities (e.g. all types of fraud) can never confer rights or legitimate interests on a respondent. In the present case the Respondent used the disputed domain name as email of the Complainant’s Chief Commercial Officer’s name – this constitutes fraud in this Panel’s view. C. Registered and Used in Bad Faith
As stated in many decisions rendered under the Policy (see Robert Ellenbogen v. Mike Pearson,WIPO Case No. D2000-0001), the Complainant must show that:
- the disputed domain name was registered by the Respondent in bad faith, and
- the disputed domain name is being used by the Respondent in bad faith
The Respondent used in the present case a privacy and proxy registration service; this however does not prevent panels from assessing a case under the UDRP elements. As established in many previous decisions, the use of a privacy registration service is not per se evidence of bad faith. However, the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith. It is this Panel’s opinion that where a privacy/proxy registration service is combined with other elements such as the registration of a domain name corresponding to and/or containing a renowned third-party trademark (like in the present case), the use of a privacy shield is to be considered an indication of bad faith registration and use of the disputed domain name. Such inference made by a panel may be refuted in the case that a respondent files a response; in the present case the Respondent did not reply to the Complainant’s contentions.
The Panel further finds, that the Respondent has used the disputed domain name to set up an email address and has used it to send emails under the name of the Complainant’s Chief Commercial Officer. Such use may be considered fraudulent.
It is therefore this Panel’s conviction that the Respondent registered and used the disputed domain name in bad faith following the evidence put forward by the Complainant in this case.
Thus, the conditions set out in paragraph 4(a)(iii) of the Policy have been met by the Complainant. 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.
Peter Burgstaller
Sole Panelist
Date: October 13, 2019
Full & Egal Universal Law Academy