Complainant is The Middleby Corporation, United States of America (“United States”), represented by CSC Digital Brand Services Group AB, Sweden.
Respondent is Jordan Brand, Ballmail, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2021. On March 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 5, 2021, 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 Complainant on March 9, 2021 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 March 10, 2021. 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 March 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 4, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 14, 2021. The Center appointed Douglas M. Isenberg as the sole panelist in this matter on April 21, 2021. 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 Complainant states that it is “a world leader in commercial foodservice solutions, residential appliances and industrial processing and baking systems”; that it is “an American publicly traded commercial and residential cooking and industrial process equipment company based in Elgin, Illinois”; that it “manufactures commercial cooking equipment, industrial processing equipment, and residential appliances”; that “[t]he commercial cooking equipment side of [it] does business with 97 out of the top 100 food service chains in the United States and internationally”; that its “customers in the Commercial Foodservice Equipment Group include YUM! Brands, Dunkin’, Burger King, Domino’s, Five Guys, Kroger and many others”; that “[i]n Fiscal Year 2019, Complainant achieved a gross profit of USD 1,103 million and a net income of USD 514 million, an increase of over USD 68.0 million from the previous Fiscal Year”; that “it has operated under the name ‘The Middleby Corporation’” since 1985; and that its primary website uses the domain name Complainant states, and provides evidence to support, that it is the owner of the registered trademark MIDDLEBY in Brazil, Registration No. 909,269,394 (registered March 13, 2018), as well as multiple registrations for the trademark MIDDLEBY-MARSHALL or MIDDLEBY MARSHALL, including United States Registration No. 1,109,952 (registered December 28, 1978). These registrations are referred to hereafter as the “MIDDLEBY Trademark.” The Disputed Domain Name was created on July 31, 2019, and is not being used in connection with an active website. Complainant provides copies of three demand letters regarding the Disputed Domain Name that were sent on its behalf to Respondent (dated January 12, 2021; January 22, 2021; and February 1, 2021), to which Complainant states it never received a response. 5. Parties’ Contentions A. Complainant Complainant contends, in relevant part, as follows: - The Disputed Domain Name is confusingly similar to the MIDDLEBY Trademark because “[a]lthough the Complainant only holds one registered trademark in the name MIDDLEBY, it has nonetheless become a distinctive identifier which consumers associate with the Complainant’s goods”; Complainant “has used ‘Middleby’ continuously throughout the United States for over a century”; and “[p]ast Panels have consistently held that a disputed domain name that consists merely of a complainant’s trademark and an additional term that closely relates to and describes that complainant’s business is confusingly similar to that complainant’s trademarks.” - Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent is not sponsored by or affiliated with Complainant in any way”; “Complainant has not given Respondent permission to use Complainant’s trademarks in any manner, including in domain names”; “Respondent is not commonly known by the Disputed Domain Name” because “the pertinent Whois information identifies the Registrant as ‘Jordan Brand / ballmail,’ which does not resemble the Disputed Domain Name in any manner”; “Respondent has failed to make use of this Disputed Domain Name’s website and has not demonstrated any attempt to make legitimate use of the domain name and website”; “Respondent registered the Disputed Domain Name on July 31, 2019, which is significantly after Complainant filed for registration of its MIDDLEBY trademark with the INPI and its MIDDLEBY MARSHALL/MIDDLEBY-MARSHALL trademarks with the USPTO, CIPO, IMPI, IP Australia and OEPM, and significantly after Complainant’s first use in commerce of its trademark in 1985”; and “Respondent registered the Disputed Domain Name on July 31, 2019, which is significantly after the Complainant’s registration of its - The Disputed Domain Name was registered and is being used in bad faith because, inter alia, “passively holding a domain name can constitute a factor in finding bad faith registration and use pursuant to Policy ¶ 4(a)(iii)”; “where the Disputed Domain Name consists solely of Complainant’s MIDDLEBY trademark with the mere addition of the related term ‘corp’, which is part of Complainant’s full entity name, there is no plausible good-faith reason or logic for Respondent to have registered the Disputed Domain Name” and instead “it is indicative of an intention to hold the disputed domain name for some future active use in a way which would be competitive with or otherwise detrimental to Complainant” (internal punctuation and citation omitted); Respondent is the registrant of multiple other domain names that misappropriate the trademarks of well-known brands and businesses” ( Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a). A. Identical or Confusingly Similar Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the MIDDLEBY Trademark. As to whether the Disputed Domain Name is identical or confusingly similar to the MIDDLEBY Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “middlebycorp”) because “[t]he applicable Top-Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1. The Disputed Domain Name contains the MIDDLEBY Trademark (at least, Brazil Reg. No. 909,269,394) in its entirety. As set forth in section 1.7 of WIPO Overview 3.0, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” Multiple previous panels have found that the addition of “corp” to a disputed domain name does nothing to alleviate confusing similarity. See, e.g., Government Employees Insurance Company (“GEICO”) v. Domain Privacy Service FBO Registrant / E@T Execuitve, E@T Execuitve,WIPO Case No. D2020-1423 (“[t]he mere addition of the descriptive term ‘corp’ does nothing to avoid a finding of confusing similarity to the Complainant’s trademark”). Accordingly, the Panel finds that Complainant has proven the first element of the Policy B. Rights or Legitimate Interests Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent is not sponsored by or affiliated with Complainant in any way”; “Complainant has not given Respondent permission to use Complainant’s trademarks in any manner, including in domain names”; “Respondent is not commonly known by the Disputed Domain Name” because “the pertinent Whois information identifies the Registrant as ‘Jordan Brand / ballmail,’ which does not resemble the Disputed Domain Name in any manner”; “Respondent has failed to make use of this Disputed Domain Name’s website and has not demonstrated any attempt to make legitimate use of the domain name and website”; “Respondent registered the Disputed Domain Name on July 31, 2019, which is significantly after Complainant filed for registration of its MIDDLEBY trademark with the INPI and its MIDDLEBY MARSHALL/MIDDLEBY-MARSHALL trademarks with the USPTO, CIPO, IMPI, IP Australia and OEPM, and significantly after Complainant’s first use in commerce of its trademark in 1985”; and “Respondent registered the Disputed Domain Name on July 31, 2019, which is significantly after the Complainant’s registration of its WIPO Overview 3.0, section 2.1, states: “[w]hile the overall burden of proof in UDRP proceedings is on the complainant, 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.” The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b). The passive holding doctrine set forth in the landmark decision Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, is applicable here, given the strength of the MIDDLEBY Trademark and Respondent’s failure to provide any evidence of good faith use. Further, Respondent’s previous loss in at least one decision under the Policy, Cryoport, Inc. v. Jordan Brand / ballmail, Forum Claim No. 1931193, indicates a “pattern” of conduct establishing bad faith under paragraph 4(b)(ii) of the Policy, because “as few as two instances of abusive domain name registration” constitutes a pattern. WIPO Overview 3.0, section 3.1.2. Finally, Respondent’s failure to respond to Complainant’s three demand letters is additional evidence of bad faith. Encyclopedia Britannica v. Zucarini,WIPO Case No. D2000-0330; and RRI Financial, Inc., v. Ray Chen,WIPO Case No. D2001-1242. Accordingly, the Panel finds that Complainant has proven the third element 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 Disputed Domain Name Douglas M. Isenberg
Sole Panelist
Date: May 3, 2021
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