ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Bonduelle SA v. Name Redacted Case No. D2024-3947 1. The Parties The Complainant is Bonduelle SA, France, represented by IP Twins, France. The Respondent is Name Redacted.1 2. The Domain Name and Registrar The disputed domain name is registered with Hostinger Operations, UAB (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 26, 2024. On September 26, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 27, 2024, 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 (Domain Admin, Privacy Protect, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on October 2, 2024, 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 3, 2024. 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 1The Respondent appears to have used the name of an employee of the Complainant when registering the Disputed Domain Name. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the Disputed Domain Name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST 12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.
page 2 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 4, 2024. In accordance with the Rules, paragraph 5, the due date for Response was October 24, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 25, 2024. The Center appointed Alexandre Nappey as the sole panelist in this matter on October 31, 2024. 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 Bonduelle SA, a worldwide company in the agro-industrial sector, created in 1853. Bonduelle is present in three continents and 100 countries, with more than 11,000 employees and working with more than 2,000 partner farmers around the world. The global net sales of the group Bonduelle was around 2,406 million Euros net sales during the year 2022-2023. The Complainant is the owner of numerous trademarks registered prior to the disputed domain name, among which: - European Union figurative trademark BONDUELLE No. 007151467, registered on March 19, 2009, duly renewed, and designating goods in international classes 29, 30, 31 & 32; - International trademark BONDUELLE No. 636442, registered on May 23, 1995, duly renewed, and designating goods in international classes 29, 30 & 31; - France trademark BONDUELLE No. 1448420, registered on July 8, 1988, duly renewed, and designating goods in international classes 29, 30, 31, 32 & 33; - United States of America trademark BONDUELLE No. 4876712, registered on December 29, 2015, and designating goods in international class 29. The Complainant is also the owner of the domain names registered since February 21, 1997, and registered since December 20, 1998. The disputed domain name was registered on July 11, 2024. The disputed domain name is not active. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends that the disputed domain name is similar to its earlier trademark BONDUELLE, to the point of creating confusion.
page 3 Indeed, the disputed domain name reproduces the earlier trademark BONDUELLE in its entirety. The addition of the generic term “groupes” is not sufficient to avoid misleading Internet users and to avoid creating a likelihood and confusion with the Complainant’s trademark, Then, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant contends that the Respondent has never been authorized by the Complainant to use the trademark BONDUELLE in any manner. The Complainant asserts that the Respondent has acquired no trademark in the name “Bonduelle” which could have granted the Respondent rights in the disputed domain name. The Complainant has found no evidence whatsoever that the Respondent is known by the disputed domain name. The Complainant puts forth that the Respondent has not, before the original filing of the Complaint, used or made preparations to use the disputed domain name in relation to a bona fide offering of goods or services. The Complainant asserts that the Respondent used the name of the Complainant’s current Chairman of the Board of Directors, and the Complainant asserts that the Respondent used this alias in order to impersonate him. Third, the Complainant claims that the disputed domain name was registered and is being used in bad faith. The Complainant contends that its trademark is intensively used in several countries worldwide and that it enjoys a solid notoriety in 100 countries. Then it is very likely that the Respondent knew the trademark BONDUELLE at the time of registration of the disputed domain name. The Complainant asserts that the Respondent registered the disputed domain name decades after the registration of the trademark BONDUELLE, well-known worldwide. Therefore, it is very likely that the registration of the disputed domain name was made by the Respondent with the Complainant’s trademark in mind. Finally, the Complainant contends that the use of the name of the Complainant’s CEO in the WhoIs of the disputed domain name, in an attempt to conceal the Respondent’s true identity and to mislead people into believing that the disputed domain name is registered by or at least endorsed by or affiliated with the Complainant is a major element demonstrating the Respondent’s bad faith registration. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Notwithstanding the default of the Respondent, the Complainant has the burden of proof to make its case in accordance with paragraph 4(a) of the Policy, and to demonstrate that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; an (iii) the disputed domain name has been registered and is being used in bad faith.
page 4 However, under paragraph 14(b) of the Rules, where a Party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”. Having considered the Parties’ submissions, the Policy, the Rules, and applicable law, the Panel’s findings on each of the above-mentioned elements are the following: A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other term, here “groupes” and a hyphen, may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although 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 difficult 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
page 5 In the present case, the Panel notes that the Complainant has shown that its BONDUELLE trademark has been registered and used for years and is enjoying a reputation of goodwill for its products and services across the world. Thus, the Respondent could not reasonably be unaware of the Complainant’s rights when it registered the disputed domain name, and the Panel cannot conceive any use that the Respondent could make of the disputed domain name that would not interfere with the Complainant’s trademark rights. Panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness or reputation of the Complainant’s trademark, and the composition of the disputed domain name, and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy. The Respondent’s use of the Complainant’s CEO’s name when registering the disputed domain name further supports Panel’s finding on bad faith. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy. The Panel finds that the Complainant has established 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 be transferred to the Complainant. /Alexandre Nappey/ Alexandre Nappey Sole Panelist Date: November 13, 2024
Full & Egal Universal Law Academy