WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Boulder Brands Inc. v. August n Paulsen

Case No. D2013-1487

1. The Parties

The Complainant is Boulder Brands Inc. of Niwot, Calorado, United States of America, represented by SafeNames Ltd., United Kingdom.

The Respondent is August n Paulsen of Sichuan, China.

2. The Domain Name and Registrar

The disputed domain name <udisglutensfree.com> is registered with Shanghai Yovole Networks, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 22, 2013. On August 22, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 23, 2013, 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. On September 3, 2013, the Center transmitted an email to the parties in both Chinese and English regarding the language of the proceeding. On September 5, 2013, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

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 September 10, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 30, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 1, 2013.

The Center appointed Susanna H.S. Leong as the sole panelist in this matter on October 14, 2013. 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, Boulder Brands Inc., is a supplier of gluten-free and health and wellness products in the United States, Canada and various other Countries. The Company operates in two segments: Smart Balance and Natural. The Smart Balance segment consists of its branded products in spreads, butter, grocery and milk. The Natural segment consists of its Earth Balance, Glutino and Udi's Gluten Free branded products. In the current proceedings the Complainant is bringing forward the complaint for one of its brands, Udi’s Healthy Foods, LLC (Udi’s) also known as Udi’s Gluten Free. The Complainant has registered various trademarks relating to its UDI’S Gluten Free brand, including UDI’S and UDI’S GLUTEN FREE in the United States and the European Union since 2006. The Complainant actively uses the UDI’S and UDI’S GLUTEN FREE trademarks in relation to the advertisement and business operations relating to its UDI’S GLUTEN FREE set of branded goods and services. In particular, the UDI’S GLUTEN FREE marks form a clear and visible part of the Complainant’s online material on its website.

The Respondent registered the disputed domain name <udisglutensfree.com> on June 5, 2013.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights on the following grounds:

1. The Complainant has registered various trademarks relating to its Udi’s Gluten Free brand, including UDI’S and UDI’S GLUTEN FREE in the United States and the European Union since 2006. The Complainant actively uses the UDI’S and UDI’S GLUTEN FREE trademarks in relation to the advertisement and business operations relating to its UDI’S GLUTEN FREE set of branded goods and services. In particular, the UDI’S GLUTEN FREE marks form a clear and visible part of the Complainant’s online material on its website.

2. The application of confusing similarity test under the UDRP involves a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name. In this case, the Complainant’s mark, disregarding the spaces and apostrophe, UDISGLUTENFREE when compared to the disputed domain name <udisglutensfree.com>, clearly demonstrates that visually there is no significant difference, and the disputed domain name consists of the entirety of the Complainant’s registered trademark with the addition of the letter “s”. As such, the addition of the letter “s” to the Complainant’s UDI’S GLUTEN FREE trademark does not diminish the overall similarity of the domain name string and the trademark. The Complainant asserts that the Respondent’s conduct in registering the disputed domain name is equivalent to typosquatting.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name on the following grounds:

1. Prior to any notice of the current dispute there was no evidence of the Respondent’s use, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. The Complainant asserts that the Respondent is passing itself off as the Complainant and therefore, the Respondent does not have a legitimate right in the disputed domain name. The Respondent has replicated the Complainant’s website in order to falsely mislead Internet users into believing that the disputed domain name is owned by the Complainant. Consequently, the Complainant contends that the Respondent cannot claim to be offering bona fide goods or services.

2. Prior to any notice of the current dispute, the Complainant contends that the Respondent has not made use of, or demonstrable preparations to use, the disputed domain name or names corresponding to the disputed domain name in connection with a bona fide offering of goods or services. The Complainant places particular emphasis on the term bona fide as it has long been established that rights and legitimate interests cannot emanate from situations where a registrant has chosen to register a particular domain name that is a typo-variant of a trademark, in order to create an impression of association with the holder of such trademark. The Complainant contends that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods, but intentionally trading on the fame of the Complainant’s brand. It appears that Respondent is using the disputed domain name as a means of attracting Internet users to its site and replicating the Complainant’s official website “www.udisglutenfree.com” in order to appear as though it is affiliated with the Complainant.

3. The Complainant contends that the Respondent’s use of the disputed domain name cannot be considered a bona fide offering of goods or services as the Respondent was fully aware of the Complainant and its UDI’S GLUTEN FREE brand at the time of registering the disputed domain name.

4. Given that the Respondent is not affiliated with the Complainant in any manner whatsoever and has not been licensed by the Complainant or authorised in any way to use the UDI’S GLUTEN FREE marks, the Complainant is unaware of any circumstances under which the Respondent could make legitimate use of the disputed domain name given the fame, reputation and goodwill associated with the Complainant and its UDI’S GLUTEN FREE brand. Currently, <udisglutensfree.com> displays the Complainant’s UDI’S GLUTEN FREE mark prominently as well as images and content lifted directly from the Complainant’s website, and offers for sale unauthorised and possibly counterfeit goods using the Complainant’s images and marks.

5. To the best of the Complainant’s knowledge, there is no evidence the Respondent has been or is commonly known by the disputed domain name or has acquired any trademark or service mark rights in them. The Complainant contends that the Respondent is not known individually, as a business, or in any other manner by the domain or the name “Udi’s Gluten Free” or “Udi’s Glutens Free” generally. The Complainant asserts that the detailed records from the WhoIs database of the disputed domain name <udisglutensfree.com> lists its name as “AUGUST N PAULSEN”. Thus, the Complainant asserts that the Respondent is not commonly known as “Udi’s Gluten Free” or “Udi’s Glutens Free”.

6. The Complainant has reason to believe the Respondent does not operate any businesses relating to or using the terminology in the disputed domain name, and the Respondent does not possess any trademark applications. Searches conducted within the trademark databases of the United States Patent and Trademark Office and World Intellectual Property Organization have returned no results relating to the Respondent to UDISGLUTENSFREE or UDIS GLUTENS FREE.

7. The Complainant’s UDI’S GLUTEN FREE brand predates the Respondent’s registration of the disputed domain name by more than 5 years. Due to the growing popularity of the Complainant’s brand, the Respondent must have become aware of UDI’S GLUTEN FREE brand.

8. The Respondent is taking advantage of the goodwill associated with the Complainant’s mark by registering a typo-variant of the Complainant’s mark for the purpose of drawing Internet users to the Respondent’s website when Internet users mistakenly make a typing error. The Respondent has registered “UDI’S GLUTENS FREE” and has included the addition of the letter “s” to clearly deceive Internet users into thinking the Respondent’s website is owned by the Complainant.

The Complainant contends that the disputed domain name was registered and is being used in bad faith on the following grounds:

1. The Complainant contends that the Respondent was aware of the UDI’S GLUTEN FREE brand at the time of registration of the disputed domain name. The Complainant’s mark is indeed, as indicated above, widely renowned due to the well established and recognized reputation of UDI’S GLUTEN FREE products and combined with the fact that the Complainant’s services are extensively marketed worldwide.

2. The Complainant contends that the Respondent has registered and used the disputed domain name in bad faith as it is clearly looking to profit from the exploitation of the Complainant’s UDI’S GLUTEN FREE marks. The Complainant asserts that the use of the disputed domain name demonstrates the Respondent’s acute awareness of the existence of the Complainant and its UDI‘S GLUTEN FREE brand.

3. The Complainant states that the Respondent’s bad faith is further illustrated by the fact that the Respondent was officially informed of the Complainant’s rights in the UDI’S GLUTEN FREE mark after a US Digital Media Copyright Act complaint was sent to Google, Inc. Despite the notice, the website remains active.

4. The Complainant has performed a search based on the contact number listed on the WhoIs details and found that the Respondent has registered numerous domain names, under various different aliases, but the Registrar and contact details remain the same. The Complainant was able to find over 180 domain names connected to the same contact number. The Complainant contends that as a result of Respondent’s familiarity with the domain name industry, the Respondent is likely to be more knowledgeable of the value associated with domain names than the average Internet user. As a sophisticated Internet user, the Complainant asserts that Respondent “knew” or “ought to have known” of the existence of the Complainant and the Complainant’s trademark rights.

5. The Complainant submits that the disputed domain name was registered and is being used in bad faith by the Respondent as this is a typical case of cybersquatting as the Respondent’s activity falls directly within paragraph 4(b) of the Policy. The Complainant believes the Respondent’s choice of a slightly misspelled version of the Complainant’s mark and domain name is deliberate. The Respondent has gone to the extent of not only registering a near identical domain name but also replicated Complainant’s official website. The Complainant contends that the Respondent has intentionally sought to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship or endorsement of its website in terms of paragraph 4(b)(iv) of the Policy. By using the disputed domain name to ultimately deceive Internet users into believing the website is owned by the Complainant. The Complainant asserts that the Respondent is confusing Internet users as to the source, sponsorship or endorsement of this website and, has attempted to replicate the Complainant’s business model which only reinforces the level of confusion.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

According to the information received by the Center from the Registrar, the language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the Case File, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceedings should be in English. Complying with the instructions from the Center, the Complainant has submitted a request that English should be the language of the present proceeding for the following reasons:

1. The composition of the disputed domain names and the content of the resolving website in this dispute are entirely in English.

2. The Complainant asserts that the Respondent is familiar with the English language to a level where the Respondent can communicate in English without apparent difficulties.

3. The Complainant is a corporation based in the United States and is currently represented in these proceeding by an English company. The Complainant and its representative are not able to communicate in Chinese.

After considering the circumstances of the present case and the submission of the Complainant’s request, the Panel is of the opinion that the language of the present proceeding shall be English and the decision will be rendered in English. The Panel based its decision on the following reasons:

(i) The Panel’s discretion under the Policy

Paragraph 11 of the Rules provides:

“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

Thus, parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.

(ii) The circumstances of this proceeding

One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.

In particular, the Panel notes that the material facts of this proceeding are generated in the English language. On record, the Respondent appears to be Chinese and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence has been adduced by the Complainant to suggest in the interests of fairness, the language of the proceeding ought to be English. In particular, the Panel notes that (a) the disputed domain name is made up of letters in Ascii-Script and could be pronounced phonetically in English; and (b) the website to which the disputed domain name is pointed is in English which suggests that the Respondent understands English; (c) the Panel accepts the evidence adduced by the Complainant evidencing that the Respondent is conversant and familiar with the English language; and (d) the Center has notified the Respondent of the proceeding in both Chinese and English. The Respondent had a choice to respond to the Complaint in either Chinese or English as the Panel who has been appointed by the Center is conversant in both languages. The Panel is of the view that if the Respondent had experienced difficulty with the English language, it could have communicated this to the Center and the Panel would have ruled accordingly. However, the Respondent has chosen not to respond to the Complainant’s allegations. Considering these circumstances, the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.

In considering the circumstances of the present case, the Panel decides that the language of the proceeding shall be English and the decision will be rendered in English.

6.2. Substantive Elements of the Policy

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following Policy elements is satisfied:

(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; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.

Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.

On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Complainant has adduced evidence to demonstrate that it has registered trademark rights and continues to have such rights in the UDI’S and UDI’S GLUTEN FREE trademarks in relation to the advertisement and business operations relating to its UDI’S GLUTEN FREE set of branded goods and services in the United States and the European Union.

In assessing the degree of similarity between the Complainant’s trademark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. Furthermore, it is also pertinent to have regard to the distinctiveness of the Complainant’s trademark. The issue of degree of similarity between the Complainant’s mark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned in this case, and the average consumer is the Internet user seeking to purchase or download information about the Complainant’s products.

The disputed domain name consists of the Complainant’s mark UDI’S GLUTEN FREE in its entirety, except for the absence of the apostrophe and the addition of the letter “s” after the word “gluten” as well as the Top-Level Domain suffix “.com”. The Panel is of the view that the most prominent and distinctive part of the disputed domain name is the term “udi” which is the name of the original owner, Udi Baron, of the Udi’s Gluten Free brand of products. Although the Complainant’s trade mark UDI’S GLUTEN FREE comprises of generic words such as “gluten” and “free”, it is still possible for the Complainant to have exclusive rights over them if they have acquired a secondary meaning indicating trade origin through substantial use. This is supported by evidence that the Complainant actively uses the UDI’S and UDI’S GLUTEN FREE trademarks in relation to the advertisement and business operations relating to its UDI’S GLUTEN FREE set of branded goods and services. In particular, the UDI’S GLUTEN FREE marks form a clear and visible part of the Complainant’s online material on its website.

The Panel concludes that a comparison between the Complainant’s UDI’S GLUTEN FREE and the disputed domain name <udisglutensfree.com> shows they are both visually and aurally similar. The addition of suffixes such as “.com” or “.net” being the generic Top-Level Domain is not a distinguishing factor.

The Panel finds for the Complainant on the first part of the test.

B. Rights or Legitimate Interests

Based on the following reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:

(i) the Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term “udisglutensfree” in its business operations;

(ii) there was no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the UDI’S GLUTEN FREE mark;

(iii) there is no indication whatsoever that the Respondent is commonly known by the disputed domain name and/or is using the disputed domain name in connection with a bona fide offering of goods or services.

The Panel notes the overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1. Based on the above reasons, the Panel finds that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption.

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Panel notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or evidence of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. The Panel further notes that the Respondent has failed to submit a Response to the Complaint filed against it. In particular, the Respondent has failed to make submissions to demonstrate that it has rights to or legitimate interests in the disputed domain name.

In accordance with the Rules, paragraph 14, the Panel thus draws such inferences as it considers appropriate, which are that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent appears to be unable to adduce evidence of any rights to or legitimate interests in the disputed domain name.

The Panel finds for the Complainant on the second part of the test.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:

(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the Respondent has registered the disputed 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; or

(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s 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.

The above circumstances are indicative of registration and use of the disputed domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the panel can also constitute registration and use of the disputed domain name in bad faith by a respondent in appropriate cases.

One important consideration in the Panel’s assessment of whether the Respondent has registered and used the disputed domain name in bad faith is prior knowledge on the part of the Respondent of the Complainant’s rights in the trademark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcend national borders. Taking into account the substantial reach that the Complainant and its UDI’S GLUTEN FREE mark have on the Internet, as well as the market presence of the Complainant in numerous countries, the Panel finds that it is highly unlikely that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain name. A simple search on the Internet would reveal the presence of the Complainant’s trademark and domain names. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain name. Consequently, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of association with the Complainant and its products.

Where the Respondent has chosen to register a disputed domain name that is identical or confusingly similar to the Complainant’s trademark and where the mark in question has through extensive use acquired a widespread reputation, a reasonable conclusion is that the mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, the burden on the Respondent to show that the choice of the disputed domain name was made legitimately and in good faith for the genuine offering of goods or services on the Internet is a very heavy one. There is no evidence that the Respondent has used or intends to use to the disputed domain name for purposes of bona fide offering of goods and services over the Internet. On the contrary, the Respondent has used the disputed domain name <udisglutensfree.com> to display the Complainant’s UDI’S GLUTEN FREE mark prominently as well as images and content lifted directly from the Complainant’s website, and offers for sale unauthorised and possibly counterfeit goods using the Complainant’s marks. This in turn creates the impression that the Respondent and its website at “www.udisglutensfree.com” are associated or recommended by the Complainant when that is not true. In this regard, the Panel finds that the Respondent has not provided an explanation for its actions.

The Panel finds that the Complainant has adduced evidence and proved that by using a confusingly similar disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website under paragraph 4(b)(iv) of the Policy. The Panel finds that the Complainant’s mark in question has through extensive use acquired a widespread reputation. This fact coupled with the lack of a plausible explanation for the choice of incorporating the Complainant’s mark in the disputed domain name, the replication by the Respondent of materials found on the Complainant’s website on the website upon which the disputed domain name resolves, thereby creating the impression that they are associated or recommended by the Complainant when that is not true is certainly a relevant factor indicating bad faith registration and use.

Thus, the Panel finds for the Complainant on the third part of the test.

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 <udisglutensfree.com> be transferred to the Complainant.

Susanna H.S. Leong
Sole Panelist
Date: November 4, 2013