The Complainant is Premier Foods PLC of Hertfordshire, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”), represented by Eversheds, LLP, United Kingdom.
The Respondent is premiergoods of Leeds, United Kingdom.
The disputed domain name <premier-foods.net> (“the Domain Name”) is registered with Tucows Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2010. On May 14, 2010, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the Domain Name. On May 14, 2010, Tucows Inc. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 25, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 15, 2010. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on June 16, 2010.
The Center appointed Alan L. Limbury as the sole panelist in this matter on June 23, 2010. 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.
In the absence of a Response, the Panel accepts the following assertions of the Complainant as having been established.
The Complainant is the UK's largest food producer and has used the name “Premier Foods” as its trading name and company name since 2002 in the UK, Ireland and Europe. The name “Premier Foods” is particularly well-known and is widely recognised among traders and businesses in the food sector, given the Complainant's position as a market leader in this field.
In March, 2008 and January, 2010, the Complainant filed applications in the United Kingdom to register PREMIER FOODS as a trademark. Those applications remain pending.
The Complainant operates a website at “www.premierfoods.co.uk” which includes information about the PREMIER FOODS business and brand, and is primarily directed towards other traders and businesses in the food sector (such as grocers and suppliers) as well as investors. The domain name <premierfoods.co.uk> was registered in 2000.
The Domain Name was registered on October 9, 2009. It led until recently to a website purporting to be that of the Complainant, directed also primarily towards traders and businesses in the food sector.
The Complainant has built up significant reputation and goodwill in its name and consequently has extensive unregistered trade mark protection in respect of it in the territories in which it trades. The Domain Name is virtually identical to the name “Premier Foods”.
The Respondent has no rights or legitimate interests in respect of the Domain Name, which was registered and is being used in bad faith.
The Respondent has intentionally misled Internet users and customers by claiming, incorrectly, that its website is that of the Complainant. Such use of the Domain Name is clearly not in accordance with honest and fair practices and does not indicate that any interest the Respondent has in the Domain Name is “legitimate”. There is no evidence that the Respondent has ever used or been known by the name “Premier Foods”. .
Upon becoming aware of the Respondent's activities, the Complainant immediately contacted the Respondent's web hosting company (eUKHost) which promptly removed the site.
In view of the Respondent's false claims that its website is that of the Complainant, it is clear that the Respondent has registered the Domain Name in order to divert Internet users looking for information about the Complainant to the Respondent's website, where they would be deliberately misled that the Respondent's website was the Complainant's genuine site.
Given the particularly strong recognition within the industry of the name PREMIER FOODS as denoting the Complainant and its brands, the Respondent is taking advantage of the Complainant's reputation in the name “Premier Foods” to falsely imply a trading connection with the Complainant.
The Respondent did not reply to the Complainant's contentions.
To qualify for cancellation or transfer of a domain name, a complainant must prove each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(ii) the disputed domain name has been registered and is being used in bad faith.
A respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441. See also Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL INTERNATIONAL PLC v. MARK FREEMAN, WIPO Case No. D2000-1080 and ALTAVISTA COMPANY V. GRANDTOTAL FINANCES LIMITED et al., WIPO Case No. D2000-0848.
The Complainant's registration applications do not give rise to trade mark rights: see Aspen Grove, Inc. v. Aspen Grove, WIPO Case No. D2001-0798 and Spencer Douglass MGA v. Absolute Bonding Corporation, WIPO Case No. D2001-0904.
In the absence of a Response, the Panel accepts the Complainant's assertion that since 2002 it has provided goods under the unregistered PREMIER FOODS mark and has thereby acquired a reputation such that members of the food industry would associate those goods or services with the Complainant and not with others not authorized by the Complainant to use the mark. Hence the Panel finds that the Complainant has common law rights in that mark.
The specific top level of the Domain Name “.net” is irrelevant for the purpose of determining whether the Domain Name is identical or confusingly similar: Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
The Panel finds the Domain Name to be virtually identical and confusingly similar to the Complainant's mark. The Complainant has established this element of its case.
The Complainant's assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interest in the Domain Name on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in that name: Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 and the cases there cited. The Respondent has made no attempt to do so.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
The similarities between the Respondent's and the Complainant's websites and the use of the Complainant's contact details on the Respondent's website lead to the firm conclusion that, by using the Domain Name, the Respondent has intentionally attempted 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 of the Respondent's website and of products on its website. Pursuant to the Policy, paragraph 4(b)(iv), such use is evidence of both bad faith registration and bad faith use. In the absence of any other evidence as to the Respondent's state of mind at the time of registration, the Panel finds that the Domain Name was registered and is being used by the Respondent in bad faith. The removal of the website by the Respondent's web host at the Complainant's behest does not affect this conclusion.
The Complainant has established this element of its case.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <premier-foods.net> be transferred to the Complainant.
Alan L. Limbury
Dated: June 29, 2010