The Complainant is Froneri Ltd, United Kingdom, represented by Pinsent Masons LLP, United Kingdom.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America (“United States”) /Patrick Taiwo, Froneri, United Kingdom.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 2021. On September 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 29, 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 the Complainant on October 4, 2021, 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 amended Complaint on October 5, 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 the Respondent of the Complaint, and the proceedings commenced on October 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 31, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 2, 2021.
The Center appointed Michael D. Cover as the sole panelist in this matter on November 17, 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 BackgroundThe Complainant is part of a global organization that was formed in 2016, following the merger of R&R Ice Cream and Nestlé. The Complainant is a manufacturer of ice cream and ice cream-related products. The Complainant is the largest producer of ice cream in Europe by volume and the second largest in the world, with a group turnover in the year ending December 31, 2018 of EUR 2,6 billion. The Complainant has produced ice creams for a wide brand range, including Haagen Danz, Nuii, Cadbury’s, Oreo, Milka, and Kit Kat.
The Complainant is the proprietor of numerous registrations of its trademark FRONERI in many jurisdictions, including in the European Union, United Kingdom, and the United States and details of these registrations are set out in Annex 2 to the Complaint. The Complainant has used its FRONERI trademark continuously since 2016 in relation to ice cream and ice cream-related products and these products have been advertised through its websites, television and off-line in a variety of publications.
In particular, the Complaint owns the United Kingdom trademark No. UK00003185421, FRONERI, filed on September 13, 2016 and registered on January 27, 2017.
The Complainant is the registrant of a portfolio of domain names, including
The Disputed Domain Name was registered on July 25, 2021. The Respondent’s details originally were subject to a privacy shield and redacted and were then clarified by the Center as Patrick Taiwo, Froneri. The Disputed Domain Name resolved to a website which is a copy of the Complainant’s website and uses displays that are identical to the Complainant’s website.
5. Parties’ Contentions A. ComplainantIdentical or Confusingly Similar
The Complainant submits that, as a result of the Complainant’s activities, it has built up substantial goodwill and gained a valuable reputation in the Complainant’s trademark FRONERI in relation to with which the trademark is registered and no other associated. The Complainant states that the goodwill associated with the trademark FRONERI is the property of the Complainant and cannot pass to any third party without formal assignments and no such assignment in favour of the Respondent has taken place.
The Complainant submits that the Disputed Domain Name is almost identical to the Complainant’s FRONERI trademark and business and trading names, bar the addition of the letter “c”. The Complainant continues that, given the international presence and associated reputation of the Complainant’s FRONERI, no party would choose the Disputed Domain Name, unless with the intention to create a false impression of an association with the Complainant in order to attract business from the Complainant or misleadingly divert the public from the Complainant to the Respondent.
The Complainant requests that the Panel decide that the Disputed Domain Name be transferred to the Complainant and that a costs award be granted to the Complainant.
Rights or Legitimate Interests
The Complainant notes that, from the information on the WhoIs record, the Respondent registered the Disputed Domain Name on July 25, 2021.
The Complainant notes that the Disputed Domain Name points to a website which is a direct copy of the Complainant’s website or points to the Complainant’s website and submits that the message conveyed is that the Complainant and the Respondent are connected. The Complainant submits that the Respondent’s action under the Disputed Domain Name constitutes trademark infringement and that the Disputed Domain Name should be transferred to the Complainant (and the Disputed Domain Name and website taken down).
The Complainant continues that there is strong evidence in the nature of the Disputed Domain Name and the blatant trademark infringement to conclude that the Respondent registered the Disputed Domain Name knowing that it is likely to attract interest from Internet users, who are searching for the Complainant, and that the Respondent registered the Disputed Domain Name in full knowledge of the Complainant and its activities.
Registered and Used in Bad Faith
The Complainant submits that, given the widespread use and reputation of the Complainant’s trademarks, the Respondent must have been aware that, in registering the Disputed Domain Name, it was misappropriating the valuable intellectual property of the Complainant. The Complainant continues that that it is undeniable and obvious that the Disputed Domain Name has been registered in bad faith for illegitimate purposes in order to infringe the Complainant’s trademarks; to deceive the public into believing that the goods and services offered by the Respondent are those of the Complainant; to use the Disputed Domain Name in order to redirect Internet traffic to an alternative website or to facilitate the creation of email addresses that could be used for illegitimate or fraudulent purposes. The Complainant submits that none of these uses would constitute fair use and as such the Respondent has not generated any legitimate interest in the Disputed Domain Name. The Complainant also states that the Respondent’s registration of the Disputed Domain Name has prevented the Complainant from registering a domain name which corresponds to the Complainant’s marks and that the notoriety and reputation of FRONERI is such that members of the public would always assume that there is an association between the Respondent and the Complainant.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsThe Complainant must establish on the balance of probabilities that the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and that the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Panel accepts and finds that the Complainant has established rights in its trademark FRONERI. The Complainant has registered rights going back to 2016, which is sufficient for the purposes of paragraph 4(a)(i) of the Policy.
The Panel also accepts and finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark FRONERI, in which the Complainant has established rights. The Disputed Domain Name incorporates the Complainant’s trademark FRONERI in its entirety and, in assessing confusing similarity, it is well established that the incorporation of an additional element, in this case the letter “c’”, does not prevent a finding of confusing similarity.
Lastly, under this heading, it is well established that the addition of a generic Top Level-Domain Name (gTLD), such as “.com” does not avoid a finding of confusing similarity.
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark FRONERI, in which the Complainant has rights, and that the provisions of the Policy paragraph 4(a)(i) have been met.
B. Rights or Legitimate InterestsThe Panel accepts and finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Panel accepts that the Respondent is not affiliated with or authorized by the Complainant to use the Complainant’s FRONERI trademark nor has the Respondent been commonly known by the Disputed Domain Name nor has this trademark been assigned to the Respondent; there is no evidence that such a license or assignment has taken place.
The Panel also accepts and finds that the Respondent, before any notice of the dispute, has made no 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, that the Respondent has made no legitimate noncommercial of fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s FRONERI trademark. Such use as has taken place has comprised the Disputed Domain Name resolving to a website which is a close copy of the Complainant’s website.
The Panel accordingly finds that the provisions of the Policy, paragraph 4(a)(ii) have been met.
C. Registered and Used in Bad FaithThe Panel accepts that the Disputed Domain Name has been registered and is being used in bad faith. The Panel infers from the documents and material before it that the Respondent was aware or should have been aware of the Complainant’s well-known FRONERI trademark, which was both used and registered well before the registration of the Disputed Domain Name in July 2021. As a result of the substantial use that has taken place of the FRONERI trademark since 2016 and the large portfolio of FRONERI trademark registrations, the Panel finds that the Complainant’s trademark has become well-known. It is well established from previous Panel Decisions that the mere registration of a domain name that is confusingly similar to a well-known trademark by a non-affiliated or unauthorized entity, as here, can of itself create a presumption of bad faith.
The Panel accepts that the Respondent has registered and, indeed, used the Disputed Domain Name for the purpose of attempting to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s FRONERI trademark as to source or affiliation. This is supported by the fact that the Disputed Domain Name did resolve to a website, which imitates that of the Complainant and offers of goods and services of a similar nature to those of the Complainant.
The Panel accordingly finds that the provisions of the Policy, paragraph 4(a)(iii) have been met.
Remedy
Having decided that the Complainant has satisfied all the relevant parts of the Policy, the Panel has to decide on the remedy. The Panel will order the transfer of the Disputed Domain Name to the Complainant. The Complainant has requested an award of costs but the Panel has no power to award costs and so will not be making an award of costs.
7. DecisionFor 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
Michael D. Cover
Sole Panelist
Date: November 26, 2021