The Complainant is HelloFresh SE, Germany, represented by Bird & Bird LLP, Germany.
The Respondent is Domain Admin, Whois Privacy Corp., Bahamas. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 23, 2021. On June 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 24, 2021, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on July 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 21, 2021. An informal email communication from the email “[...]@hellofresh.pro” was sent to the Center on July 21, 2021. The Center appointed Daniel Peña as the sole panelist in this matter on August 9, 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 The Complainant owns multiple registrations for HELLOFRESH in word form including rights recognized in the European Union, the Russian Federation, Canada, Australia, New Zealand, Norway, Japan, Republic of Korea, and the United States of America. The Complainant’s HELLOFRESH marks are registered and used for food products and services in International Classes 29, 31, 35, and 43 (among others) including custom assembly and delivery of meal-kits for preparation and consumption at home. For example, the Complainant registered International trademark no. 1261986 on March 10, 2015, designating various jurisdictions including the Russian Federation. The Complainant is a publicly traded company and is designated by its HelloFresh SE trade name. The Complaint cites broad recognition of the HELLOFRESH trademarks based upon the Complainant’s use of these marks for a decade and its delivery of approximately 600 million meals to over five million customers in the past year. Consumers are able to place orders for the Complainant’s HELLOFRESH branded goods and services via various websites registered and maintained by the Complainant under its HELLOFRESH trademark. The disputed domain name was registered on December 22, 2020 and has been used for a website that offers prepared meals delivery. 5. Parties’ Contentions A. Complainant The Complainant argues that the disputed domain name is identical to its HELLOFRESH trademarks because it has been composed by adopting the HELLOFRESH mark in its entirety and combining this mark with the Top Level-Domain (“TLD”) “.pro”. The Complainant contends that the Respondent does not have any rights or legitimate interests in and to the disputed domain name, and that the Complainant has never provided any license for the Respondent to use its HELLOFRESH trademarks in the disputed domain name. The Complainant considers that the composition of the disputed domain name is likely to confuse Internet users by causing them to mistakenly believe that the disputed domain name is related to the trademarks, company name, and domain names of the Complainant. The Complainant argues that the use of its HELLOFRESH trademarks and domain names by the Complainant precedes the registration of the disputed domain name, and alleges that the disputed domain name was registered by the Respondent to attract Internet users for the purposes of commercial gain and/or fraudulent purposes. The Complainant reckons that the content of the disputed domain name indicates that the Respondent has been using the disputed domain name for phishing activities or other illicit purposes, and emphasizes that the disputed domain name has featured content that is nearly identical to the pages featured at the Complainant’s website. The Complaint contends that the unauthorized use of its HELLOFRESH trademarks and the disputed domain name are likely to result in damage to the Complainant’s reputation. In addition, the Complainant contends that the Respondent undertook illicit financial transactions from the bank accounts of the Complainant’s costumers, as if it was a transaction made by the Complainant. The Complainant is requesting that ownership of the disputed domain name be transferred from the Respondent to the Complainant. B. Respondent The Respondent did not reply the Complainant’s contentions. However, in the email communication of July 21, 2021, sent from the email address “[…]support@hellofresh.com”, the “Support team” indicated that the disputed domain name was bought legally and without any restriction or notification that it is “trademark or intellectual property through https://internetbs.net”. Moreover, it indicated that “we have made some additional research and saw that there are still many available options to buy” a number of domain names which include or are composed of the term “hellofresh” and “[s]o in our case we do not see any property rights infrigement [sic]". However, in order to avoid any conflict situation, it offered to cancel the registration of the disputed domain name. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; Considering these requirements, the Panel rules as follows: A. Identical or Confusingly Similar The Panel finds that the disputed domain name Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant bears the burden of proof in establishing this requirement. In view of the difficulties inherent in proving a negative and because the relevant information is mainly in the possession of the Respondent, it is enough for the Complainant to establish a prima facie case which, if not rebutted by sufficient evidence from the Respondent will lead to this ground being set forth. The Panel will now examine the Complainant’s arguments regarding the absence of rights or legitimate interests of the Respondent in connection with the disputed domain name and the content of the email communication of July 21,2021 sent from the email address “[…]@hellofresh.pro”. The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant’s trademarks in a domain name or in any other manner. The Respondent did not submit a formal Response. The Panel finds that the email communication of July 21, 2021 does not establish that the Respondent has rights or legitimate interests in the disputed domain name and therefore does not rebut the Complainant’s prima facie case. Furthermore, the unrebutted claim of the Complainant that the disputed domain name is being used for phishing at sensitive data further supports a finding that the Respondent lacks rights or legitimate interests in the disputed domain name (see WIPO Overview 3.0, section 2.13). Moreover, in the informal communication of July 21, 2021 an offer to cancel the registration of the disputed domain name was made. The Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a disputed domain name in bad faith: (i) the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; (ii) the 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 the respondent has engaged in a pattern of such conduct; (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 respondent’s website or location or of a product or service on its website or location. In the Panel’s view, a finding of bad faith may be made where the Respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the disputed domain name. In this case, the commercial recognition of the trademark HELLOFRESH is such that the Respondent, must have had knowledge of the trademarks before registering the disputed domain name. The fact that the disputed domain name is identical to the Complainant trademark reinforces that its registration is not a mere coincidence. Noting the use of the disputed domain name, the Respondent appears to have chosen the disputed domain name in order to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of the products on its website. Under paragraph 4(b)(iv) of the Policy, this circumstance shall be evidence of the registration and use of a domain name in bad faith. In addition, the use of the disputed domain name for phishing, supported by the Complainant’s claims and evidence, affirms a finding of bad faith (see WIPO Overview 3.0, section 3.4). The Panel concludes that the disputed domain name was registered and is being used in bad faith. 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 Daniel Peña
(ii) the 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.
Sole Panelist
Date: August 24, 2021
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