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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Baker Perkins Ltd v. REM Group LLC, Ray Miller

Case No. D2014-0230

1. The Parties

The Complainant is Baker Perkins Ltd, of Peterborough, United Kingdom of Great Britain and Northern Ireland, represented by John Cowx, Jr, United Kingdom of Great Britain and Northern Ireland.

The Respondents are Ray Miller and REM Group LLC of Saginaw, Michigan, United States of America (“US”).

2. The Domain Name and Registrar

The disputed domain name <bakerperkins.com> (“Disputed Domain Name”) is registered with FastDomain, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2014. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. Also on February 14, 2014, the Registrar transmitted by email to the Center its verification response confirming the Respondents as the registrant and provided 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on February 26, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was March 18, 2014. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on March 19, 2014.

The Respondents emailed the Complainant on March 7, 2014 (“March 2014 Email”), offering to transfer the Disputed Domain Name to the Complainant in return for USD 10,000. On March 13, 2014, the Complainant forwarded the March 2014 Email to the Center asking whether or not the March 2014 Email assists their Complaint, as it further demonstrates that the Respondents have little interest in continuing to use the Disputed Domain Name, other than retaining it as an asset for financial gain. The Center responded on the same date stating that it is not in a position to provide the parties with any specific legal advice, and that if the Complainant wished to pursue settlement negotiations with the Respondents it could submit a Request for Suspension. The Complainant responded to the Respondents’ March 2014 Email stating that it rejected the Respondents’ offer and would continue with its Complaint.

The Center appointed Gabriela Kennedy as the sole panelist in this matter on March 28, 2014. 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 paragraph 7 of the Rules.

4. Factual Background

The Complainant was established in 1923 and is a supplier of process equipment for the bakery, biscuits, confectionery, cereal and snack industry. It also operates in the pharmaceutical and pet food industries and produces a range of extruding equipment for industrial processes. The Complainant is the registered owner of the trade mark BAKER PERKINS in the European Union and the US.

According to the WhoIs search results and the Registrar’s confirmation with regard to the Disputed Domain Name, the registrant’s name is Ray Miller (the first Respondent) and the registrant’s organization is REM Group LLC (the second Respondent).

The Disputed Domain Name was originally registered on March 16, 1998. On November 29, 2000, the Disputed Domain Name was transferred to B&P Process Equipment and Systems LLC (“B&P Process”). According to the Complainant’s submissions, an agreement between the Complainant and B&P Process was entered into on or around the year 2000, whereby it was agreed that B&P Process would use and protect the BAKER PERKINS brand in the US in relation to extrusion equipment. At this time, the Disputed Domain Name used to redirect users to the website of B&P Process.

On January 17, 2007, the Disputed Domain Name was still registered to B&P Process, but the administrative contact was changed to the first Respondent (i.e. Ray Miller, who was the president and CEO of B&P Process at the time). In April 2008, the first Respondent left B&P Process. Between March 2008 and April 2010, the Disputed Domain Name was transferred to the first Respondent. In July 2010, the WhoIs details for the Disputed Domain Name were updated to show that the first Respondent’s organization was REM Investments LLC. In January 2014, the WhoIs details of the Disputed Domain Name were updated so that the first Respondent’s organization was listed as REM Group LLC (i.e. the second Respondent).

In February 2011, the Disputed Domain Name resolved to a holding page. In May 2013, the Disputed Domain Name was started to automatically redirect users to the website “www.prescottmachine.com”.

5. Parties’ Contentions

A. Complainant

The Complainant’s submissions can be summarized as follows:

(a) The Disputed Domain Name is identical to the Complainant’s trading name as well as the Complainant’s BAKER PERKINS trade mark registered in the US and the European Union.

(b) The Respondents are not commonly known as Baker Perkins or a recognizable variation of it.

(c) The Disputed Domain Name does not direct traffic to any website legitimately associated with the Complainant. Due to the unequivocal association of the Complainant’s trade name with the Disputed Domain Name, the Respondents cannot claim any legitimate interest in the use of the Disputed Domain Name for noncommercial gain nor can the Respondents claim fair use of the Disputed Domain Name without intent for commercial gain.

(d) The Respondents have acted in bad faith to benefit commercially from their illegitimate use of the Disputed Domain Name. The first Respondent, whilst he was the CEO of B&P Process and was listed as the administrative contact for the Disputed Domain Name, transferred the Disputed Domain Name away from B&P Process shortly before he left the company. The Disputed Domain Name now automatically redirects users to the website “www.prescottmachine.com”, which sells products in direct competition with the Complainant. Prescott Machine LLC is owned and operated by the first Respondent and is a direct competitor of the Complainant. The Respondents have never been authorized to use the Disputed Domain Name in respect of Prescott Machine LLC or the “www.prescottmachine.com” website.

(e) The Disputed Domain Name is being used by the Respondents to mislead consumers into believing that the “www.prescottmachine.com” website is associated with, endorsed by or connected to the Complainant, for commercial gain and to disrupt the Complainant’s business. The Respondents’ use of the Disputed Domain Name will also tarnish the Complainant’s BAKER PERKINS trade mark and affect the integrity of the brand.

(f) The Complainant argues that renewal of the Disputed Domain Name amounts to a new registration insofar as there is a transfer of control or beneficial ownership among related entities for the purposes of establishing registration in bad faith.

B. Respondents

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

The fact that the Respondents have not submitted a Response does not automatically result in a decision in favour of the Complainant. However, the Respondents’ failure to file a Response may result in the Panel drawing certain inferences from the Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences flowing from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437, and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000 0403).

6. Admissibility of Respondents’ March 2014 Email

With regard to the March 2014 Email sent by the Respondents, as described above, the Panel notes that under the Rules, it has the power: (a) to conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules, subject to treating the parties equally and giving them a fair opportunity to present their case; and (b) to determine the admissibility, relevance, materiality and weight of any evidence.

Whilst the Complainant has not specifically requested that the Panel take into account the March 2014 Email sent by the Respondents, the Panel finds that it is prudent under the circumstances of this particular case to take it into consideration. This is based on the following reasons: (i) the March 2014 Email was an unsolicited correspondence from the Respondents to the Complainant, after they had received notice of the Complaint, seeking to “settle” the dispute by offering to sell the Disputed Domain Name to the Complainant for USD 10,000; (ii) the Respondents were copied into the Center’s subsequent correspondence with the Complainant on the matter and were thereby aware that the Center had notice of it and would have to disclose the March 2014 Email to the Panel; (iii) the Respondents also knew that the Center was copied into the email from the Complainant rejecting the Respondents’ offer; and (iv) the Respondents still had an opportunity to file a Response to rebut the assertions made by the Complainant, i.e. that the March 2014 Email shows that the Respondents intended to sell the Disputed Domain Name in return for financial gain and had awareness of the present proceeding, but the Respondents failed to file any Response.

7. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the Respondents have 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 by the Respondents in bad faith.

A. Identical or Confusingly Similar

According to the evidence provided by the Complainant, the BAKER PERKINS trade mark was registered by the Complainant in the US on 8 February 2011. No evidence or information was provided by the Complainant as to the date of registration of its BAKER PERKINS trade mark in the European Union (registration number 923029). As such, and in accordance with its powers under Rule 10(a) of the Rules, the Panel found it necessary to conduct its own factual research to enable the Panel to make its decision (see paragraph 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition). The Panel discovered that the Complainant registered the trade mark BAKER PERKINS in the European Union (registration number 923029) on 28 February 2000.

The Disputed Domain Name incorporates the Complainant’s BAKER PERKINS trade mark in its entirety. It is a well-established principle that in making an enquiry as to whether or not a trade mark is identical or confusingly similar to a domain name, the domain extension, in this case “.com”, should be disregarded (Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762).

The Panel therefore finds that the Disputed Domain Name is identical to the Complainant’s mark, and the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the Respondents may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondents’ use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services; or

(ii) the Respondents have been commonly known by the Disputed Domain Name, even if they have acquired no trade mark or service mark rights; or

(iii) the Respondents are making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. As the Respondents did not submit a Response to the Complainant’s contentions, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complaint and the evidence provided.

The Complainant contends that it had only authorized the previous registrant of the Disputed Domain Name, B&P Process, to register and use the Disputed Domain Name. In the absence of any submissions or evidence from the Respondents stating otherwise, the Panel finds it reasonable to assume that such authorization would not have extended to and did not cover use by the Respondents, even though at one point the first Respondent may have been the president and CEO of B&P Process. Any such authorization granted by the Complainant was to B&P Process for the use of the Disputed Domain Name by B&P Process itself, and not to either of the Respondents.

The Panel therefore accepts that the Respondents are not a licensee nor are they otherwise authorised by the Complainant to use the Complainant’s BAKER PERKINS mark. The Panel further accepts that the Respondents have not provided any evidence to demonstrate a registration of the BAKER PERKINS trade mark anywhere in the world or any evidence that they have become commonly known by the Disputed Domain Name. Accordingly, the Panel is of the view that a prima facie case is established, and it is for the Respondents to prove they have rights to or legitimate interests in the Disputed Domain Name.

The Disputed Domain Name automatically redirects users to a website that sells products in direct competition with the Complainant’s website. The Panel finds that the Respondents must have been aware of the Complainant’s mark when adopting the Disputed Domain Name, as the first Respondent appears to have previously been employed by B&P Process (which used to be an authorized licensee of the Complainant). The Respondents therefore appear to have intentionally used the Disputed Domain Name to redirect users to the “www.prescottmachine.com” website in order to create an impression of association or affiliation with the Complainant and/or its mark. Using a domain name to intentionally trade on the reputation of a complainant in order to direct users to the products of the complainant's competitors constitutes unfair use, and cannot amount to a bona fide offering of goods or services (see Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946; Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “madonna.com”, WIPO Case No. D2000-0847; and Robert Bosch GmbH v. Asia Ventures, Inc., WIPO Case No. D2005-0946).

The Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel notes that paragraph 4.5 of the WIPO Overview 2.0 states that “a panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision.” Since a large part of the Complainant’s arguments focus around the chain of ownership of the Disputed Domain Name, the Panel found it necessary in the present case to consider the archived WhoIs records when reaching its decision.

The Complainant asserts that the renewal or any material change in a registration record in bad faith can amount to bad faith registration. For the purposes of this case, the Panel found it unnecessary to consider such arguments raised by the Complainant. Although the Disputed Domain Name was originally created in 1998, the Panel notes, based on the archived WhoIs records, that the Disputed Domain Name was not transferred to or registered under the name of the first Respondent until around April 2010. The second Respondent was named as the first Respondent’s organization in the WhoIs record for the Disputed Domain Name on or around January 24, 2014.

It is well established that “the transfer of a domain name to a third party does amount to a new registration” (WIPO Overview 2.0, paragraph 3.7). The Panel therefore accepts that the Respondents registered the Disputed Domain Name after the Complainant first registered its BAKER PERKINS trade mark in February 2000, based on the Complainant’s trade mark registration in the European Union.

In the absence of any evidence or submissions from the Respondents to the contrary, and in light of the fact that a person with the same name as the first Respondent (i.e. Ray Miller) was previously listed as the administrative contact for B&P Process, the Panel accepts the Complainant’s assertions that the first Respondent was formerly the president and CEO of B&P Process (a former registrant of the Disputed Domain Name and also one of the Complainant’s former licensees). It therefore cannot be mere coincidence that the Disputed Domain Name was subsequently transferred to the Respondents, and that the Disputed Domain Name now resolves to a website that directly competes with the Complainant. The Panel thereby concludes that the Respondents must have been aware of the Complainant’s BAKER PERKINS trade mark at the time of registering the Disputed Domain Name, and registered and is using the Disputed Domain Name for the purposes of benefitting from the Complainant’s reputation and goodwill for commercial gain, by misleading users into believing that the Disputed Domain Name is authorized by or connected with the Complainant, but then automatically redirecting users to the Respondents’ “www.prescottmachine.com” website that sells products in direct competition to the Complainant (see Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556).

In addition, based on the March 2014 Email from the Respondents, the Panel also finds that the Respondents are now seeking to use the Disputed Domain Name to make a profit, by selling it to the Complainant, as they offered to transfer the Disputed Domain Name to the Complainant in return for USD 10,000, which appears far greater then what could conceivably be the Respondents’ reasonable out-of-pocket expenses.

Lastly, the Panel finds it worth noting that whilst the Respondents felt necessary to send the March 2014 Email to the Complainant after they received the Complaint to make an offer to sell them the Disputed Domain Name for USD 10,000, the Respondents did not specifically deny or object to any of the assertions made by the Complainant, but merely stated that they “do not ascribed [sic]” to the Complainant’s “legal theories in this matter”.

In these circumstances, the Panel finds that the Respondents have registered and are using the Disputed Domain Name in bad faith and paragraph 4(a)(iii) of the Policy has been satisfied.

8. 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, <bakerperkins.com>, be transferred to the Complainant.

Gabriela Kennedy
Sole Panelist
Date: April 11, 2014

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