Complainant is Mondelez International AMEA Pte. Ltd (“Mondelez”), Singapore, represented by Griffith Hack Patent and Trade Mark Attorneys, Australia.
Respondent is Niall Crawford, Australia, represented by Sapo Blue Pty Ltd, Australia. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2020. On July 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 14, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 16, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 19, 2020. The Center verified that the Complaint together with the amended 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 July 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 12, 2020. On July 29, 2020, the Center received an email communication from Respondent’s authorized representative including substantial arguments with a settlement offer. Complainant did not respond to Respondent’s latter email and Respondent did not submit a formal response. Accordingly, the Center notified to the Parties that it was proceeding to panel appointment on August 13, 2020. The Center appointed Robert A. Badgley as the sole panelist in this matter on August 24, 2020. 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. Respondent sent the Center an email dated August 24, 2020 asking to submit a response. On August 27, 2020, the Panel issued Procedural Order No. 1, stating: “The Panel grants Respondent additional time until September 1, 2020, to submit a response which the Panel may consider depending in part on Respondent’s explanation (also to be submitted by September 1, 2020) why he did not submit a response within the deadline established for this proceeding.” Respondent submitted a Response on August 28, 2020. Respondent explained that it had been under the assumption that the proceedings had been suspended for 30 days because of settlement discussions. In its discretion, the Panel has accepted and considered the Response. 4. Factual Background Complainant is a large global food manufacturing conglomerate, owning many famous brands, such as Nabisco, Cadbury, Oreo, Ritz, Tang, and Toblerone. Complainant’s Cadbury division manufactures and sells frog-shaped chocolate under the brand FREDDO. The FREDDO chocolate frogs have been sold since the 1930s. Complainant holds numerous trademarks, including in Australia (Respondent’s country) for FREDDO, both in word form and in stylized form featuring the word FREDDO a cartoon frog. For instance, Complainant owns Australian trademark registrations 73689 (word mark) and 74588 (stylized with frog), registered on November 28, 1938 and May 2, 1939, respectively. Annexed to the Complaint are various examples of third parties referring to Complainant’s chocolate products as “FREDDO FROGS”. The Domain Name was registered on June 6, 2002. The Domain Name currently resolves to a parking page stating that the Domain Name is for sale for USD 49,999. The page asks the visitor to “make your offer”. For some unknown stretch of time, but certainly as of March 3, 2012 (based on a screenshot submitted with the Response), the Domain Name resolved to a website including content, purportedly humorous, about the “History of Freddo Frog”, a haiku “Ode to Freddo”, and comments about the inventor of the FREDDO frog product. At the bottom of the page was the statement: “This site has absolutely no affiliation with Cadbury’s Chocolate.” Respondent explains his motivations vis-à-vis the Domain Name as follows: “The Freddo Frog website has always been a legitimate fan site that never sought to harm the Mondelez (Cadbury) name. The site was set up for children and for good humour. Unfortunately, due to other business priorities we have had to park the site until we have reasonable time to re-support it. We are expecting to return the website to its ‘humorous’ origins in the future and use the site for child charity / awareness endeavours like Cystic Fibrosis.” There is no evidence in the record of any efforts, past or current, on Respondent’s part to support any charitable programs or awareness campaigns. After the Complaint was filed in this proceeding, Respondent asserts, he offered to sell the Domain Name to Complainant for USD 3,550, to compensate for 18 years of registration and web development costs. Complainant is alleged to have countered with a smaller figure, whereupon Respondent reiterated his original offer. This was immediately rejected. 5. Parties’ Contentions A. Complainant Complainant contends that it has satisfied all three elements required under the Policy for a transfer of the Domain Name. B. Respondent Respondent asserts, as was set forth above, that he has a legitimate interest in the Domain Name, and that he did not register or use the Domain Name in bad faith. With respect to the current asking price of USD 49,999 at his website, Respondent states: “With respect to the complainant complaining about the price (prior to any negotiation). We did advise that [the Domain Name] was not currently for sale & the website was parked due to more immediate business priorities. The somewhat ‘lofty’ parked price (which was a default template) was retained for comedy & set to avoid interest.” 6. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel concludes that Complainant has rights in the mark FREDDO through longstanding registration and use demonstrated in the record. The Panel also finds that the Domain Name is confusingly similar to the mark. The Domain Name fully incorporates the distinctive FREDDO mark and adds the descriptive word “frog”. The mark is clearly recognizable within the Domain Name, and the additional term does not prevent a finding of confusing similarity between the mark and the Domain Name. Complainant has established Policy paragraph 4(a)(i). B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements: (i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or (ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or (iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. The chief problem Respondent faces in this proceeding is its lack of credibility with the Panel. Respondent’s credibility suffers from some of his statements and arguments in the Response. First, as noted above, Respondent explains the USD 49,999 asking price on his website as follows: “The somewhat ‘lofty’ parked price (which was a default template) was retained for comedy & set to avoid interest.” Thus, Respondent is simultaneously suggesting (“default template”) that he had no control over the content (including the sale price), and indicating that he pegged the price at a “lofty” amount in order to dissuade potential buyers. Respondent’s simultaneous disavowal of, and manifestation of, his own agency seriously undermines his credibility. Similarly, Respondent attacks the Complaint on the basis that Complainant’s word mark is actually FREDDO, not FREDDO FROG, apparently in order to argue that FREDDO FROG is not reasonably within the scope of Complainant’s protected trademark rights. Again, Complainant sells FREDDO chocolate frogs. Respondent’s own website (from March 2012) repeatedly uses the term “Freddo Frog” with specific reference to Complainant’s chocolate product. This argument, implausible on its own, runs counter to Respondent’s claim that he was developing a “legitimate fan site”. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), it is recognized that under certain circumstances a legitimate interest may vest by means of creating a genuine “fan site”. One factor which may disqualify an otherwise legitimate site is if the respondent is deriving, or seeking to derive, commercial gain from his use of the Domain Name. See WIPO Overview 3.0, section 2.7.1. Another disqualifying factor is whether the Panel finds, in the circumstances of the case, that the supposed “fan site” was merely pretextual rather than a genuine exercise of free speech. Id. Here, the Panel notes that the current website advertises the Domain Name for sale at a “lofty” price of USD 49,999. The Panel further finds, on this record and on the inferences drawn from Respondent’s lack of credibility, that the “fan site” here was ultimately a pretext to mask Respondent’s primary goal, viz., to profit from the Domain Name. Based on the record developed here, and the inferences drawn from the Parties’ submissions (including on credibility as noted above), the Panel concludes that Complainant has demonstrated that Respondent has no legitimate interests in respect of the Domain Name. The Panel finds it more likely than not that Respondent registered the Domain Name for commercial gain, namely, to sell it for an amount well in excess of its documented out-of-pocket costs. Complainant has established Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”: (i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or (ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or (iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. The Panel concludes that Respondent registered and used the Domain Name in bad faith. The Panel incorporates its finding in the previous section that Respondent, on this record and given Respondent’s lack of credibility, was more likely than not motivated primarily to derive commercial gain by targeting Complainant’s FREDDO trademark and selling the Domain Name for a sum well in excess of his out-of-pocket costs, in violation of the above-quoted Policy paragraph 4(b)(i) and paragraph 4(b)(iv). Complainant has established Policy paragraph 4(a)(iii). 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 Robert A. Badgley
Sole Panelist
Date: September 6, 2020
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