The Complainant is The Consumer Goods Forum, France, represented by Thomsen Trampedach GmbH, Denmark.
The Respondent is Robert Burgh, Nexcor Technologies, Inc., United States of America (“United States”), represented by The Seigel Law Firm LLC, United States.
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2021. On November 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 23, 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 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 November 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 20, 2021. The Response was filed with the Center on December 20, 2021. The Complainant filed a supplemental filing on December 21, 2021.
The Center appointed Antony Gold as the sole panelist in this matter on January 4, 2022. 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 Comité International d’Emtreprises à Succursales (“CIES”) was founded in 1953 with the objective of representing the interests of food retail chains. In 2000, it launched the Global Food Safety Initiative, commonly known in the food and retail sectors by its acronym, “GFSI”, with the stated goal of reassuring and strengthening consumer confidence in the quality and safety of food products by facilitating mutual recognition of various competing food safety standards, which had been benchmarked by GFSI. In 2008, the GFSI initiative gained wide recognition in the United States, and generated interest in the industry press, when Walmart became the first nationwide grocer to require its approximately 60,000 suppliers to have its factories and other manufacturing facilities certified against a GFSI-benchmarked standard. An industry press article in August 2008 reports Walmart as encouraging other food retailers “to join [it] and several other major global retailers in embracing the Global Food Safety Initiative (GFSI), in an effort to create and adopt uniform safety standards”. Between 2008 and 2009, Coca-Cola adopted GFSI-recognised certificates for all its 1,000 manufacturing plants and the profile of GFSI has increased further since that time.
In 2009, the Complainant was formed, as a non-profit association under French law, as the successor to both CIES and also the Global Commerce Initiative, which had been founded in 1999. It now represents some 400 retailers, manufacturers and other stakeholders across 70 countries and, according to the Complainant’s website, its member companies have combined yearly sales of USD 3.5 trillion and employ nearly 10 million people.
On September 14, 2012, the Complainant applied for a European Union figurative mark in classes 16, 35, 38, 41, and 42, which was registered on February 18, 2013. The mark comprises a circular logo device with text below comprising the letters “GFSI” underneath which, in smaller font, are the words “Global Food Safety Initiative”.
Seven of the disputed domain names were registered on February 5, 2010. The remaining disputed domain names were registered on September 30, 2012. The disputed domain names resolve to websites which are in either identical or very similar form, each of which promotes the Respondent’s food safety compliance-related software, branded as KLEANZ. The top of the home page of each website is headed “KLEANZ Food Safety Compliance”. Other website content includes the claim “KLEANZ – Everything food safety in one place in real-time” and “KLEANZ Helps You Meet Every Standard and Certification FMSA, GFSI, SQF, BRC, ISO, FDA, USDA, cGMP, HACCP, HARCP, and more. Each agency, association or consultant may expect the same information presented differently. Most plants still have to document for multiple standards. KLEANZ allows you to document once and report for all standards”.
5. Parties’ Contentions A. ComplainantThe Complainant says that the disputed domain names are identical or confusingly similar to a trade mark or service mark in which it has rights. It refers to its European Union Trade Mark for GFSI GLOBAL FOOD SAFETY INITIATIVE, details of which are set out above, and says that it is generally appropriate to not take account of the figurative elements of a mark for the purpose of assessing confusing similarity. When the textual elements of the Complainant’s trade mark are considered in isolation, it is clear that “GFSI” is the most distinctive element, in that it is written in a much larger font than the other textual elements, and that “Global Food Safety Initiative” functions merely as an explanation of the “GFSI” acronym. A comparison of the disputed domain names for the purpose of assessing confusing similarity should therefore be performed by comparing them with the “GFSI” component of the Complainant’s mark. Applying this test, all the disputed domain names are confusingly similar to the Complainant’s mark, in that each of them contains the term “gfsi” as the first four characters and add to it a term such as “documents”, “audits”, “software”, “inspections”, and so on. The addition of these terms does not prevent any of the disputed domain names from being found confusingly similar to the Complainant’s trade mark.
The Complainant says also that the Respondent has no rights or legitimate interests in respect of the disputed domain names. So far as the Complainant is aware, the Respondent has not been commonly known by any of the disputed domain names. Each disputed domain name is used by the Respondent to display a copy of its website at “www.kleanz.guru” and does not contain any reference to the disputed domain name in the website text.
Whilst the disputed domain names are used in connection with the offering of the Respondent’s food safety related software, such use does not amount to a bona fide offering of goods and services, as the Respondent’s goods and services overlap with those for which the Complainant’s mark is used and thereby falsely suggest affiliation with the trade mark owner. The Respondent is using the disputed domain names to promote its own business in the food safety certification sector and its use of the disputed domain names is likely to mislead the public into thinking that its software and services have been benchmarked and are recognized as valid by the Complainant. Moreover, to the extent that the Panel decides to include it in its analysis, the affirmative defence of nominative fair use, as it exists under United States federal trade mark law, does not apply to the present dispute, given that the Complainant is based in France and that the conditions for the applicability of the doctrine are not met.
Finally, the Complainant says that the disputed domain names were registered and are being used in bad faith. Whilst the Complainant does not own any registered trade marks which pre-date the registration of the disputed domain names, the Complainant has legal rights analogous to an unregistered trade mark in the term “gfsi” which pre-date the registration of the disputed domain names. It is sufficient for the purposes of the Policy for the Complainant to establish that its marks have become a distinct identifier which consumers associate with its services; see, for example, S.N.C. Jesta Fontainebleau v. Po Ser,WIPO Case No. D2009-1394. The Complainant has made continuous and extensive use of the GFSI mark ever since the initiative was started in 2000, with Global Food Safety Conferences held on an annual basis and a variety of promotional materials produced. The fact that GFSI was promoted under its own emblem and logo demonstrates that it was intended as the distinctive name of the initiative. Further, the Complainant registered the domain name
The Respondent’s use of the disputed domain names in conjunction with its website creates the misleading impression that the Respondent’s Kleanz software and associated products have been authorized by the Complainant or that the Respondent is otherwise participating in the GFSI collaboration. The Respondent’s systematic targeting of the Complainant’s mark goes beyond what Internet users would reasonably expect of an unrelated party. The disputed domain names have been registered and used in bad faith in an attempt to attract, for commercial gain, Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s mark as to the affiliation and endorsement of those websites and the services advertised on them. Moreover, the Respondent’s registration of 10 disputed domain names comprises a pattern of conduct intended to prevent the Complainant from reflecting its mark in a corresponding domain name within the meaning of paragraph 4(b)(ii) of the Policy.
B. RespondentThe Respondent says that none of the disputed domain names is either identical or confusingly similar to the Complainant’s full registered trade mark, which is GFSI GLOBAL FOOD SAFETY INITIATIVE. Each disputed domain name comprises the letters “gfsi” followed by a term, which is not found anywhere in the Complainant’s mark, that describes the Respondent’s software or services. Equally, the words “global food safety initiative” do not appear anywhere in the disputed domain names.
Relevant consumers will understand that the disputed domain names resolve to websites that advertise the goods or services identified in the domain name, namely documentation, mobile applications and so on, which can be used in conjunction with responding to regulatory compliance events such as audits and inspections. Relevant purchasers of either the Complainant’s or the Respondent’s products will be sophisticated and knowledgeable. They are unlikely to believe that the Respondent’s websites are sponsored or affiliated with the Complainant and will understand the difference between the two. The Respondent is an industry leading and world-renowned provider of food safety regulation compliance software that can be used by companies seeking to obtain compliance from regulatory organizations and agencies. The Respondent cannot inform consumers that its software can be used to conduct audits and ensure compliance with the Complainant’s standards without using the term “GFSI”. Therefore the Respondent can use at least a minimal amount of the Complainant’s mark as required, including in domain names, in order to identify this purpose. The Respondent is making a legitimate nominative or referential use of “GFSI” in the disputed domain names without intent to misleadingly divert consumers or tarnish the Complainant’s mark. In this case, the minimal amount used results in the appearance, sound, meaning and commercial impression of the disputed domain names being significantly dissimilar to relevant purchasers in the channels of commerce relating to food safety regulation compliance.
The Respondent is using only so much of the mark as is reasonably necessary to identify that its software can be used to audit and ensure compliance with the Complainant’s standards and it has done nothing that might suggest that its websites are sponsored or endorsed by the Complainant. The case of American Society of Mechanical Engineers v. Freeport Welding & Fabricating Inc.,WIPO Case No. D2014-0009, is instructive in that the panel found that the respondent had established rights or legitimate interests in the domain names in issue through its nominative use of the ASME certification mark and that the respondent needed to use the complainant’s ASME mark to accurately identify its ASME-certified goods and services. Accordingly, the respondent had established rights or legitimate interests in the domain names in issue through its nominative use of the complainant’s ASME mark in making bona fide offerings of its goods and services. Similarly, the Respondent is entitled to inform consumers that its software can be used to conduct audits that comply with the Complainant’s standards.
The Respondent says also that the Complainant has not offered any traditional evidence to support its contention that “GFSI” has acquired secondary meaning in the United States such as advertising expenditures or market penetration or sales. Secondary meaning is acquired in the United States after five years of substantially exclusive use. As the Complainant alleges that widespread use of its mark in the United States did not begin until 2008, it will not have acquired a secondary meaning until 2013, that is after the date of registration of the disputed domain names.
Finally, the Respondent says that the Complainant has not met its burden of proving that the Respondent registered and used the disputed domain names in bad faith. All that the Complainant has alleged, in effect, is that there were some common law rights somewhere in the world to GFSI GLOBAL FOOD SAFETY INITIATIVE when the disputed domain names were obtained and that this fact gives rise per se to bad faith. This general allegation fails to satisfy the Complainant’s burden. As the Respondent had legitimate rights to obtain the disputed domain names at the time of registration, its registrations could not have been in bad faith. The Respondent has continuously made legitimate nominative use of the mark in the disputed domain names to identify its software by redirecting to its main website and there has therefore been no bad faith use. The Respondent is not cybersquatting on the disputed domain names, nor trying to pass of its goods as those of the Complainant, but simply informing consumers that its software can be used to conduct audits that determine compliance with the Complainant’s standards.
6. Discussion and FindingsParagraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Procedural issue; Complainant’s supplemental filingOn December 21, 2021, the Complainant lodged a short supplemental filing. Other than reiterating that the Respondent is neither certified nor recognized by GFSI, the filing comprises submissions rather than evidence that is responsive to points in the Response which could not reasonably have anticipated by the Complainant. The Panel has a discretion whether to consider the Complainant’s supplemental submission and considers that it is neither necessary nor appropriate to do so.
B. Identical or Confusingly SimilarWhen considering the first element under the Policy, the Top-Level Domain of each disputed domain name, as a technical requirement of registration, does not form part of the comparison. Nor are the design elements of a mark taken into account and it is sufficient that the Complainant’s mark is in existence as at the date of filing the Complaint.
The Complainant’s registered mark, comprises a central circle, surrounding by a series of arcs, beneath which, in large font and in the same colour and shade as the central circle, are the letters “GFSI”. Underneath these letters, in a much smaller and differently shaded font, are the words “Global Food Safety Initiative”. These words are evidently present in order to explain the meaning of the larger and more prominent acronym, “GFSI”. “GFSI” accordingly comprises the dominant portion of the mark.
In the light of this finding, the Panel deals only briefly with the Complainant’s submissions that it has also unregistered common law or trade mark rights in GFSI solus. As explained at section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) in order to establish unregistered or common law trademark rights for the purposes of the Policy, a complainant must show that its mark has become a distinctive identifier which consumers associate with its goods and/or services. As discussed below in relation to the third element, the term “GFSI” is an identifier associated by the relevant public exclusively with the Complainant and, for the purposes of these proceedings, the Panel finds that the Complainant additionally has unregistered rights in this term – indeed it defies reason to suggest that the Respondent would have registered the disputed domain names but for the source-identifying capacity in the GFSI mark.
Each of the disputed domain names comprises the term “gfsi” and combines it with a term such as “document”, “mobile”, “software”, or “audit”. These additional words do not prevent the disputed domain names from being found confusingly similar to the Complainant’s mark. Section 1.7 of the WIPO Overview 3.0 explains that the first element under the Policy functions primarily as a standing requirement and that “While each case is judged on its own merits, 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”.
The dominant feature of the Complainant’s mark, GFSI, is recognizable within each of the disputed domain names. The Panel therefore finds that each of them is confusingly similar to a trade mark in which the Complainant has rights
C. Rights or Legitimate InterestsParagraph 4(c) of the Policy provides, without limitation, examples of circumstances whereby a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are if a respondent has used, or made demonstrable preparations to use, the domain name in connection with a bona fide offering of goods and services, if a respondent has been commonly known by the domain name or a name corresponding to the domain name, or if a respondent has made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in issue.
Before turning to the Respondent’s case is that it has been making fair use of the disputed domain names, the Panel deals with three matters.
First, the GFSI initiative was launched by CIES in 2000 and therefore pre-dates the formation of the Complainant in 2009. However, the Complainant says that it is the successor to CIES terms of the maintenance and development of the GFSI initiative and this is confirmed by the press and other articles it has provided. It is consistent with this position that such unregistered trade mark or common law rights as developed in the terms “GFSI” and “GLOBAL FOOD SAFETY INITIATIVE” prior to the Complainant’s formation have also transferred to the Complainant and the Panel proceeds on this basis.
Second, both parties have made reference to United States trade mark law applicable to the circumstances in which an unregistered mark will be deemed to have acquired a secondary meaning. As explained at section 4.15 of the WIPO Overview 3.0, UDRP jurisprudence generally does not require resort to particular national laws. Having regard also to the fact that the Complainant’s activities extend significantly beyond the United States and that the Complainant’s head office is in France, it is neither necessary nor appropriate, for the purposes of determining the Complaint, to consider doctrines applied under United States law relating to nominative fair use. In any event the Panel notes this legal concept is well understood and discussed in UDRP cases such as Oki Data, infra,and the WIPO Overview 3.0.
Third, the Respondent says its case in relation to the second element is supported by an earlier decision under the Policy, namely American Society of Mechanical Engineers v. Freeport Welding & Fabricating Inc, WIPO Case No. D2014-0009 (supra) (“Freeport”). This decision concerned the registration by the respondent of multiple domain names incorporating the complainant’s ASME mark, which the complainant used to certify goods and services as complying with its standards. The panel held that two of the domain names in issue, namely
There is an important distinction between the facts in Freeport and the current circumstances in that, in Freeport, the respondent was fully certified by the complainant and was therefore found to be able to use its ASME mark, whereas in the current case the Respondent has no form of certification, authorization, or other approval from the Complainant. The Respondent claims only that its customers can use its software to meet GFSI-benchmarked standards – or, indeed, many other standards. More generally, the Panel notes that there have been two subsequent decisions of UDRP panels in which the Freeport decision has been considered. The first of these is Malwarebytes, Corp. v. Charlie Jones,WIPO Case No. D2014-0226, where, for a number of reasons, the panel chose not to follow the reasoning of the panel in Freeport. The second is Royal Institution of Chartered Surveyors v. Martin Rushton, WIPO Case No. D2016-0951. The complainant in these proceedings is often referred to by its acronym of RICS and the complaint was denied in relation to the domain name
Fair use in the context of the Policy is often applied to an evaluation of circumstances whether a respondent claims that it is making a noncommercial fair use of a third party domain name although broadly similar principles are applied when considering fair use in a commercial context. A common instance of this is nominative fair use by resellers or distributors, in respect of which the test first developed in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (“Oki Data”) is generally applied when considering the second element.
The OKI Data test sets out four cumulative requirements for a respondent to fulfill if it is to be found to be making a bona fide offering of goods and services and thus have a legitimate interest in a domain name which incorporates a third party’s mark. These are that; (i) the respondent must actually be offering the goods or services at issue;(ii) the respondent must use the site to sell only the trademarked goods or services; (iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and (iv) the respondent must not try to “corner the market” in domain names that reflect the trademark. The OKI Data test has been applied in other circumstances where a respondent is claiming a right to use a third party mark in a domain name on the grounds that it is providing goods or services which comprise, are compatible with, or which relate in some other way to the third party’s mark; see, for example, Project Management Institute v. CMN.com,WIPO Case No. D2013-2035.
The Oki Data test requires a small degree of adjustment in order to read onto the current circumstances. The first requirement is, at least arguably, satisfied in that the Respondent is promoting its software as capable of assisting prospective customers with compliance programs intended to meet a standard certified by the Complainant. The second principle is not fulfilled in that the Respondent’s website promotes its software as capable of being used in order to meet not only standards certified by the Complainant’s GFSI initiative, but at least ten other compliance standards, i.e., it is used to draw users in by invoking a notion of the Complainant’s reputation only to promote the Respondent’s services related to the Complainant’s competitors (a form of “bait and switch”). The third element of the test is broadly fulfilled in that the Respondent’s website does not assert or imply that the Respondent has any particular relationship with the Complainant, only that its software can be used to assist users to produce reports which are capable of meeting a variety of third party standards.
Finally, the fourth criteria is not fulfilled; the registration by the Respondent of 10 domain names which incorporate the Complainant’s mark each of which combines the mark “GFSI” with another word loosely associated with the Complainant’s initiative goes well beyond any conceivable business need and, to that extent, the Respondent has sought to corner the market in domain names which incorporate the Complainant’s mark. Moreover, the Respondent has not offered any justification for having registered so many domain names which utilize – in a public-facing manner – the Complainant’s mark. In the face of such pattern of domain names drawing users in based on the reputation of the Complainant’s mark, the Respondent’s claim that it is only using the Complainant’s mark to the minimum degree necessary to inform consumers that its software can be used to conduct audits and ensure compliance with the Complainant’s standards is unsustainable.
The lack of any proper justification is reinforced because the website for each disputed domain name resolves to the same, or substantially the same, content. So,
The Respondent’s registrations of the disputed domain names therefore fall outside the scope of legitimate interest, as set out in the Oki Data test. More generally, as explained at section 2.5 of the WIPO Overview 3.0 “Fundamentally, a respondent’s use of a domain name will not be considered “fair” if it falsely suggests affiliation with the trademark owner”. See also Rakuten Kobo Inc. v. World Public Library,WIPO Case No. D2016-1708.
Accordingly, the inherent characteristics of each disputed domain name, coupled with the use which is being made of them, are such that they cannot be considered to be used in connection with a bona fide offering of goods and services, nor is the Respondent making fair use of them. The Panel therefore finds that the Complainant has met its burden on the second element.
D. Registered and Used in Bad FaithBy the time the first seven disputed domain names were registered in February 2010, the Global Food Safety Initiative had been established for approximately 10 years and had been adopted by both Walmart and Coca-Cola amongst other major brands. The acronym “GFSI” had been used since inception of the initiative and it is evident from the press articles and other documents provided by the Complainant that, in the context of food manufacturing, distribution and sale, this term was associated exclusively with the initiative of the Complainant and its predecessor in relation to food safety standards.
The Respondent does not dispute that it was aware of the Complainant and its GFSI initiative as at the date of the disputed domain names. Its case in relation to the third element is that it had legitimate interests in registering each of the disputed domain names and that the Complainant has not met the burden of showing that any of the circumstances of bad faith which, without limitation, are set out at paragraph 4(b) of the Policy have been established. However, as discussed above, the Respondent has failed to provide any explanation as to why it was necessary for it to register 10 disputed domain names, not least when they all resolve to substantially the same content, nor why it chose not to include in the disputed domain names any element which might associate them specifically with it and/or its Kleanz software product.
The characteristics of each disputed domain name are such that Internet users familiar with the Complainant’s activities are apt to assume that each of them is owned and operated by the Complainant, or by an entity closely associated with the Complainant, and that any website to which they resolve will contain information about the Complainant’s GFSI initiative, most likely relating to the additional word which forms part of each domain name – documents, audits, inspections, and so on. The Respondent, cannot have been unaware that this was the manner in which Internet users would perceive each disputed domain name and that their registration by it meant that they were inherently likely to mislead Internet users. In the absence of any plausible good faith reason which might explain the Respondent’s registration of the disputed domain names it is reasonable to infer that it registered them in order to drive Internet traffic to its websites, thereby taking unfair advantage of the Complainant’s rights in its mark; see Eli Lilly and Company and Novartis Tiergesundheit AG v. Manny Ghumman / Mr. NYOB / Jesse Padilla,WIPO Case No. D2016-1698.
The fact that Internet users visiting any of the websites to which the disputed domain names resolve may realise that they are not, in fact, operated by or on behalf of the Complainant does not prevent the Respondent’s use of them from being misleading and from taking unfair advantage of the Complainant’s repute in its mark, because the Respondent will have thereby gained the opportunity to try to secure sales of its “Kleanz” software as a consequence of their initial confusion; see Royal Institution of Chartered Surveyors v. Martin Rushton (supra), and Yahoo! Inc. v. Hildegard Gruener,WIPO Case No. D2016-2491. The Respondent’s conduct therefore falls within the example of bad faith registration and use set out at paragraph 4(b)(iv) of the Policy namely that, by registering and using the disputed domain names, it has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its websites; see, by way of example, Nokia Corporation v Nokia Ringtones & Logos Hotline,WIPO Case No. D2001-1101 and EPSON Europe BV for and on behalf of Seiko EPSON Corporation v. Igor S Panin,WIPO Case No. D2009-1503.
For these reasons, the Panel therefore finds the Respondent’s registration and use of the disputed domain names to have been in bad faith. It is not therefore necessary to consider the Complainant’s submissions of bad faith under paragraph 4(b)(ii) of the Policy.
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 names,
Antony Gold
Sole Panelist
Date: January 18, 2022