The Complainant is Weetabix Limited, United Kingdom, represented by Gowling WLG (UK) LLP, United Kingdom.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America (“United States”) / Xiubin Fang, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2020. On October 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 5, 2020, 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 October 6, 2020, 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 October 6, 2020. 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 October 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 29, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 30, 2020. The Center appointed Peter J. Dernbach as the sole panelist in this matter on November 5, 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. 4. Factual Background The Complainant is a company producing and selling cereals products around the world since 1932. The company owns valid registrations for the WEETABIX trademark in numerous countries, including the following trademark registrations in the European Union, the United Kingdom, and the United States. European Union trademark registration no. 000042622, in class 30, registered on October 19, 1998; United Kingdom trademark registration no. 00000531457, in classes 1, 2, 3, 5, 28, 29, 30, 31 and 32, registered on April 29, 1932; and United States trademark registration no.1293105, in class 30, registered on September 4, 1984. The Disputed Domain Name was registered by the Respondent on August 24, 2020, and resolves to a website presenting links to other pornographic and online gambling websites. 5. Parties’ Contentions A. Complainant The Complainant requests that the Disputed Domain Name be transferred to the Complainant based on the following grounds: (i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant owns numerous WEETABIX trademarks worldwide, including the European Union, the United Kingdom, and the United States. The Disputed Domain Name incorporates the WEETABIX trademark in its entirety. The addition of the “uk” term does not distinguish the Disputed Domain Name from the Complainant’s WEETABIX trademarks. Further, the “uk” term suggests that the Disputed Domain Name is connected to the Complainant’s operations in the UK, which further contributes to confusion with the Complainant’s WEETABIX trademark. (ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent’s name is not related to WEETABIX and it has never been known by that name. The Complainant has not licensed or otherwise approved the Respondent’s use of any of the WEETABIX trademarks. There is no evidence that the Respondent is using the Disputed Domain Name incorporating the WEETABIX trademark for a bona fide offering of goods or services or in a legitimate noncommercial or fair manner. (iii) The Disputed Domain Name has been registered and is being used in bad faith. The Complainant has a long established reputation in the use of WEETABIX trademarks for over 80 years. WEETABIX is not a common word in English or other languages. It is not plausible that the Respondent was unaware of the Complainant and its rights in the WEETABIX trademarks at the time of the registration of the Disputed Domain Name. The Respondent is using the Disputed Domain Name to direct Internet users to a website for commercial gain by creating a likelihood of confusion with the Complainant’s WEETABIX trademark, and then disrupting the Complainant’s reputation. The Disputed Domain Name resolves to a website that host pornographic material and/or provide online gambling. It proves that the Disputed Domain Name is being used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable Provider, in compliance with the Rules of Procedure, that (i) [the disputed domain name] is identical or confusingly similar to a trademark or service mark in which the complainant has rights[.]” The Complainant has established that it has rights in the WEETABIX trademarks. The Disputed Domain Name, The addition of the geographic term “uk” does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s WEETABIX trademarks. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant’s WEETABIX trademarks. The condition of paragraph 4(a)(i) of the Policy has been fulfilled. B. Rights or Legitimate Interests Paragraph 4(a)(ii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable Provider, in compliance with the Rules of Procedure, that [...] (ii) [the respondent has] no rights or legitimate interests in respect of the [disputed] domain name[.]” Paragraph 4(c) of the Policy sets out the following several circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy: (i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or (ii) the respondent (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if the respondent has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. A complainant may show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of production passes to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455). The Complainant has established that it is the owner of the WEETABIX trademarks and confirmed that the Respondent is not connected with nor affiliated to the Complainant nor is the Respondent authorized to use the WEETABIX trademarks to register the Disputed Domain Name. Nothing in the record suggests that the name of the Respondent is at all related to “Weetabix,” nor is there any evidence that the Respondent is commonly known by that name. According to the evidence filed by the Complainant, the Disputed Domain Name directs Internet users to a webpage that host pornographic material and/or provides online gambling services. It is clear that the Respondent is using the Disputed Domain Name to attract Internet users and divert consumers for commercial gain. Therefore, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The burden of production shifts to the Respondent to come forward with appropriate evidence demonstrating rights or legitimate interests in the Disputed Domain Name. The Respondent did not submit any evidence or allegation to show that it has rights or legitimate interests as demonstrated in paragraph 4(c) of the Policy in respect of the Disputed Domain Name. Therefore, the Respondent has not claimed that it has rights or legitimate interests in the Disputed Domain Name. The Panel concludes that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that […] (iii) [the respondent’s] domain name has been registered and is being used in bad faith.” Paragraph 4(b) of the Policy explicitly states, in relevant part, that “[…] the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: [...] (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.” Pornosquatting is a practice where confusion with a well-known trademark is used to divert customers to a pornographic website for a commercial purpose, and that the pornographic content is sufficient to find a bad faith (VIVENDIi v. Guseva Svetlana,WIPO Case No. D2018-2631; Red Bull GmbH v. Whois Agent, Domain Protection Services, Inc. / esco escortlar, escort sitesi,WIPO Case No. D2017-1639; L’Oréal v. Robert Caceres, Dollerviews,WIPO Case No. D2015-1200). The Complainant’s WEETABIX trademarks have been registered in many jurisdictions in the world, including the European Union, the United Kingdom, and the United States. The Respondent chose to use the Complainant’s trademarks as the distinctive part of the Disputed Domain Name. No allegation or evidence suggests that the Respondent selected the WEETABIX trademarks as used in the Disputed Domain Name for any reason other than the reputation of the Complainant’s trademarks. Therefore, the Panel finds that the Disputed Domain Name has been registered in bad faith. According to the evidence filed by the Complainant, the Disputed Domain Name resolves to a website that hosts pornographic material and/or provides online gambling services. It appears that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to pornographic and gambling websites by creating a likelihood of confusion with the Complainant’s WEETABIX trademarks. Given the above, the Disputed Domain Name is being used in bad faith. As the Disputed Domain Name has been registered and is being used in bad faith, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been fulfilled. 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 Peter J. Dernbach
Sole Panelist
Date: November 18, 2020
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