Complainant is Berry Fresh LLC, United States of America (“United States”), internally represented.
Respondent is Domain Administrator, See PrivacyGuardian.org, United States / Ryan Cooper, self‑represented. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2019. On December 16, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 17, 2019, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on December 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 17, 2020. On January 22, 2020, the Center received an email communication from a third-party individual, Ryan Cooper, purporting to be the Respondent. The Center received two additional email communications from Mr. Cooper on January 23 and 24, 2020, requesting an extension of time in which to file a Response and electing a three-member Panel. An informal response was submitted by Mr. Cooper to the Center on January 24, 2020. On January 24, 2020, the Center sent an email communication to the Parties acknowledging receipt of Mr. Cooper’s email communications and requesting confirmation of a three-member Panel and nomination of respective candidates. The Center received an email communication from Mr. Cooper and Complainant on January 24, 2020. On January 25, 26, 27, and 29, 2020, the Center received five email communications from Mr. Cooper. On January 31 and February 1, 2020, the Center received two email communications from Complainant. The Center appointed Georges Nahitchevansky, W. Scott Blackmer, and The Hon Neil Brown Q.C. as panelists in this matter on April 2, 2020. The Panel finds that it was properly constituted. Each member of 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 Complainant, Berry Fresh LLC, is a California based producer and supplier of berries, such as blueberries, blackberries, raspberries, and strawberries, in the United States and Canada. Complainant has used the name and mark BERRY SWEET in connection with its sale of blackberries. Complainant owns a trademark registration for the BERRY SWEET mark in Canada (Registration No. TMA 867,754), which issued to registration on December 19, 2013, and a registration in the United States on the Supplemental Register (Registration No. 3,494,262), which issued to registration on August 26, 2008. Complainant previously owned and used the disputed domain name for a website concerning its blackberry products from August 2013 through March 2019. In March 2019, Complainant inadvertently allowed the disputed domain name to lapse on account of a billing miscommunication. After the disputed domain name expired in March 2019, Respondent acquired the disputed domain name in late April or early May 2019. In July 2019, Complainant attempted to contact Respondent through NameSilo, LLC, the registrar, regarding the disputed domain name, but was unable to do so. In September 2019, Complainant made attempts through a domain name broker to acquire the disputed domain name from Respondent. The attempts were unsuccessful. Currently, the disputed domain name does not resolve to an active website or page. 5. Preliminary Considerations In this proceeding, Respondent submitted an uncertified response on January 24, 2020, eight days after Respondent’s deadline to file a response had expired on January 16, 2020, and after the Center had issued a notification of respondent’s default on January 17, 2020. With that response, Respondent also requested a three-member panel for the proceeding. Complainant has objected to both Respondent’s late filing of a response as well as to Respondent’s request for a three-member panel. Consequently, the Panel preliminarily considers whether a three-member panel is appropriate in this proceeding and whether to accept Respondent’s uncertified response. A. Respondent’s Request for a Three-Member Panel Under paragraph 10(a) of the Rules, a panel is provided the general power to “conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules.” Under paragraphs 4 and 5 of the Rules, a complainant and a respondent are allowed to request a three‑member panel at the time such party files its complaint or response, as the case may be. The Rules, however, are silent as to whether the request can only be made at the time a party submits either its complaint or its response. In the Panel’s view, as the Rules do not specifically limit a request for a three-member panel to only the time when a party files its complaint or response, either a complainant or a respondent should be free to request a three-member panel at any time prior to the appointment of a panel by the Center. Accordingly, the Panel considers Respondent’s request for a three-member panel to be timely and proper. B. Respondent’s Late Filed Response Under paragraph 5(e) of the Rules, a request by a respondent to file a late response can be granted in exceptional cases. Here, Respondent did not make a timely request for an extension of time to file a response. Instead, Respondent filed a request for an extension of time to respond seven days after Respondent had defaulted in the proceeding and a default notice had been issued by the Center. The question then is whether Respondent’s request constitutes an exceptional case, or put another way, whether Respondent has established good cause as to why the Panel should accept Respondent’s late filed response. Respondent’s basis for seeking an extension of time to file a response after a notice of default issued is a claim by Respondent that he only received notice of the proceeding on January 22, 2020. In support of that contention, Respondent has included an undated email from PrivacyGuardian.org in which Respondent is advised of the pending UDRP proceeding. Given the lack of a date in the alleged communication from PrivacyGuardian.org to Respondent, or a sworn or certified statement from Respondent regarding the facts claimed by Respondent, the Panel is left with Respondent’s unilateral and unsubstantiated statements. Accordingly, the Panel is not persuaded that Respondent has shown good cause for allowing Respondent’s late filed Response and hereby declines to accept or consider Respondent’s late filed Response. 6. Parties’ Contentions A. Complainant Complainant contends that it has rights in the BERRY SWEET mark by virtue of its trademark registrations for the BERRY SWEET mark and on account of Complainant’s commercial use of the BERRY SWEET mark since 2007 as a brand for blackberries. Complainant asserts that the disputed domain name is identical to Complainant’s BERRY SWEET mark as it fully and solely consists of the BERRY SWEET mark. Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name as Respondent (i) has made no use of the disputed domain name since registering it, (ii) has not demonstrated any public or legal connection to the disputed domain name, and (iii) has not demonstrated any legitimate noncommercial or fair use of the disputed domain name. Complainant also argues that because Complainant owns the BERRY SWEET mark, Respondent does not have any rights to use the disputed domain name to sell or market berries. Lastly, Complainant contends that Respondent registered and has used the disputed domain name in bad faith, as Respondent has made no use of the disputed domain name with an active website. Complainant further contends that Respondent’s bad faith is established by Respondent’s demand for a seven-figure amount for the disputed domain name when Respondent was contacted in September 2019 by a domain name broker working on behalf of Complainant, and by the subsequent offer made by Respondent to sell the disputed domain name for a six-figure number and/or to lease the disputed domain name for a fee to Complainant. Complainant argues that Respondent’s attempt to profit from the disputed domain name for an exorbitant price establishes that Respondent has no practical use planned for the domain name and that as such, Respondent is acting in bad faith. B. Respondent Respondent, as noted above, did not timely respond to Complainant’s contentions. 7. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and Here, although Respondent has failed to respond to the complaint, the default does not automatically result in a decision in favor of Complainant, nor is it an admission that Complainant’s claims are true. The burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. A Panel, however, may draw appropriate inferences from a respondent’s default in light of the particular facts and circumstances of the case, such as regarding factual allegations that are not inherently implausible as being true. See section 4.3, of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); see also The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0 at section 1.2.1. Complainant has provided evidence that it owns a trademark registration for the BERRY SWEET mark in Canada, and that such issued to registration well before Respondent registered the disputed domain name. While Complainant also owns a trademark registration in the United States for the BERRY SWEET mark, such is on the Supplemental Register. A mark on the Supplemental Register in the United States is considered to be descriptive and can only be relied upon when it is shown that the mark has acquired distinctiveness as a source of goods or services. Here, Complainant has provided sufficient evidence of its use of the BERRY SWEET mark over many years as a brand for blackberries prior to when Respondent acquired the disputed domain name. With Complainant’s rights in the BERRY SWEET mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain such as “.com”) is identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold. In the instant proceeding, the disputed domain name is identical to Complainant’s BERRY SWEET mark as it fully and solely consists of the BERRY SWEET mark. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s BERRY SWEET mark and in showing that the disputed domain name is identical to that trademark. B. Rights or Legitimate Interests Given that Complainant’s Complaint fails on the third element, as discussed below, the Panel does not address whether Respondent has rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith Under paragraph 4(a)(iii) of the Policy, a complainant must establish the conjunctive requirement that the respondent registered and used a disputed domain name in bad faith. Here, Complainant’s entire argument that Respondent registered and the used the domain name in bad faith rests on two grounds: (1) that Respondent has not made any use of the disputed domain name with an active website since acquiring the disputed domain name; and (ii) on communications between Respondent and a domain name broker working on behalf of Complainant in September 2020 in which Respondent purportedly initially asked for a seven-figure amount for the disputed domain name and then ultimately asked for a six-figure amount or a leasing relationship with Complainant. While those communications might show that Respondent possibly sought to profit from the disputed domain name once Respondent became aware that Complainant was the purported purchaser, they do not show that Respondent initially registered the disputed domain name in bad faith. Notably missing from Complainant’s submission is evidence showing that Respondent registered the disputed domain to take advantage of Complainant or Complainant’s rights in the BERRY SWEET mark. The basic issue that Complainant faces is that “berry sweet” is a common play on the phrase “very sweet,” and is in use by many other parties for an assortment of goods and services (by way of example, Pokemon cards and ice cream).1 While Complainant has provided evidence that it owns rights in the BERRY SWEET mark as a brand for blackberries, Complainant’s rights are limited and are not sufficiently broad to cover a wide spectrum of goods and services that might use the designation “berry sweet.” Indeed, Complainant itself implicitly recognizes this by stating that “[i]f the Respondent were to register the domain to sell or market berries, a key component of the domain name itself, they would have no right to do so.” Consequently, it was incumbent on Complainant to show that it was more likely than not that Respondent registered the disputed domain name with Complainant in mind or to take advantage of the limited rights Complainant holds in the BERRY SWEET mark for blackberries. Complainant, however, has failed to do so. The evidence before the Panel is that (i) the disputed domain name expired in March 2020, (ii) Respondent acquired the name in late April or early May 2020, (iii) Complainant in late September 2020 sought to acquire the disputed domain name from Respondent through a domain name broker, and (iv) Respondent sought an amount in excess of six-figures for the disputed domain name once Respondent was contacted by a domain name broker. None of this evidence establishes that Respondent had Complainant in mind when Respondent originally registered or acquired the disputed domain name. The evidence before the Panel does not show that Respondent has done anything since registering the disputed domain name to take advantage of Complainant’s rights in the BERRY SWEET mark in relation to berries, fruits or any other of Complainant’s products or services, or that Respondent ever contacted Complainant after acquiring the domain name to try and sell the disputed domain name to Complainant. Moreover, there is no evidence in the record that Respondent might have a pattern of prior bad faith registration and use of domain names, or might, in particular, have a pattern of scooping up domain names that inadvertently expire in order to resell them in bad faith to their prior owner at an exorbitant price. In addition, the fact that Respondent has not used the disputed domain name with an active website does not in and of itself establish passive holding. One fundamental aspect in the consideration of whether the passive holding a domain name amounts to bad faith is the degree of distinctiveness or reputation of the complainant’s mark. WIPO Overview 3.0 at section 3.3. Here, Complainant’s rights in the BERRY SWEET mark are limited and narrow and only extend to a brand of blackberries. Indeed, in the United States, where Respondent appears to be located, Complainant’s trademark registration for BERRY SWEET is on the Supplemental Register. Thus, under United States trademark law, someone reviewing Complainant’s registration on the Supplemental Register would likely understand that the BERRY SWEET mark is considered to be descriptive and that the only rights that could arise in such would be in connection to berries, and only if it could be established that the mark had acquired distinctiveness through use of the mark as a source of berries. Put another way, it is quite possible that someone registering the disputed domain name might do so in the belief that it is based on a common descriptive phrase and not on Complainant’s mark. As this is not a situation where a disputed domain name has been registered on the basis of a well-known mark, Complainant needed to show that it was more likely than not that Respondent registered the disputed domain name based on Complainants’ rights in the BERRY SWEET mark and not as a common designation used by many and considered to be descriptive by the United States Patent and Trademark Office. Complainant did not meet this burden. Thus, the fact that Respondent, to date, has not used the disputed domain name for a website and, when contacted by someone working for Complainant, believed it might have value does not in of itself suggest, without more, that Respondent was doing so to take advantage of Complainant’s trademark rights. Simply put, the fact that Respondent has not used the disputed domain name which is based on a descriptive designation or phrase does not in and of itself establish passive holding that would amount to bad faith. See WIPO Overview 3.0 at section 3.3 and cases cited therein. In sum, as the evidence does not show that Respondent registered or acquired the disputed domain name in bad faith, Complainant’s complaint fails. 8. Decision For the foregoing reasons, the Complaint is denied. Georges Nahitchevansky W. Scott Blackmer The Hon Neil Brown Q.C. 1 Given that “berry sweet” appears to be a commonly used designation, the Panel in its discretion under its general powers pursuant to paragraphs 10 and 12 of the UDRP Rules has for the benefit of the Parties and the Panel conducted a limited Google search for the term “berry sweet.” WIPO Overview 3.0 at section 4.8.
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Presiding Panelist
Panelist
Panelist
Date: April 16, 2020
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