WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Blue Apron LLC v. Contact Privacy Inc. Customer 0144168363 / Gene Still, blueaproncatering

Case No. D2017-0384

1. The Parties

Complainant is Blue Apron LLC of New York, New York, United States of America (“United States”), represented by Cowan, DeBaets, Abrahams & Sheppard, LLP, United States.

Respondent is Contact Privacy Inc. Customer 0144168363 of Toronto, Ontario, Canada / Gene Still, blueaproncatering of Sarasota, Florida, United States, self-represented.

2. The Domain Name and Registrar

The disputed domain name <blueaproncatering.com> (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 24, 2017. On February 27, 2017, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On February 27, 2017, the Registrar transmitted by e-mail to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an e-mail communication to Complainant on February 28, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 3, 2017.

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 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 Respondent of the Complaint, and the proceedings commenced on March 7, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 27, 2017. The Response was filed with the Center on March 27, 2017.

Complainant submitted an unsolicited Supplemental Filing on March 28, 2017. The Panel, in its discretion, has considered the Supplemental Filing because it was offered to rebut assertions made in the Response which Complainant could not have reasonably anticipated and because it brought to light a direct communication between the Parties that took place after the Complaint in this proceeding was filed.

The Center appointed Robert A. Badgley as the sole panelist in this matter on March 30, 2017. 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.

The Panel issued Procedural Order No. 1 on April 18, 2017 permitting Respondent to respond to Complainant’s Supplemental Filing. On April 26, 2017, Respondent sent the Center an e-mail, stating in full:

“On the letter I sent their attorney dated March 1, 2017 I was clearly trying to find what their intentions were, yes, we did receive 2 letters from them, but with all the scams out there you never truly know who you are talking too [sic]. Being in business for yourself is not easy and we always have to be careful who you are dealing with. We are a company with a great reputation and we work hard everyday to keep it that way.”

4. Factual Background

Complainant describes itself as a “subscription-based meal delivery service that provides customers with original recipes and pre-portioned ingredients needed to prepare such recipes at home.” Complainant has offered these services since 2012 under the BLUE APRON mark, which was first registered with the United States Patent and Trademark Office (“USPTO”) on October 15, 2013 (registration number 4417957). The first USPTO registration of Complainant’s BLUE APRON mark pertains to “refrigerated food package combinations … ready for cooking and assembly as a meal…”

Complainant’s business is conducted through its website, located at “www.blueapron.com”. According to the Complaint, Complainant has become an industry leader and its services have been “lauded” in prominent business periodicals such as Fortune and Business Insider.

The Domain Name was registered in September 2014. It resolves to Respondent’s website, which styles itself as “Blue Apron Café & Catering.” The website advertises free delivery in downtown Sarasota, Florida, and features various meal specials.

Complainant sent Respondent at least two cease-and-desist letters in October and November 2016, to which Respondent did not respond. According to Complainant’s unsolicited Supplemental Filing, after the Complaint in this proceeding was filed, Respondent sent Complainant’s lawyer an e-mail dated March 1, 2017, in which Respondent stated: “…if your client wants to purchase the domain name we can negotiate.”

5. Parties’ Contentions

A. Complainant

Complainant claims that the Domain Name is identical or confusingly similar to Complainant’s trademark and Respondent has no rights or legitimate interests in the Domain Name. Complainant further claims that the Domain Name was registered and is being used in bad faith. Complainant asserts that Respondent is using the Domain Name to “misdirect” or “bait” Internet users seeking Blue Apron’s food- and recipe-delivery products and services to its own site, where it advertises Respondent’s own similar, and arguably competing, food delivery and catering goods and services.”

B. Respondent

Respondent argues that it is a “café and catering company” and Complainant “send[s] ingredients in the mail to make meals.” As such, the Parties are not in competition. Respondent also asserts that the fact that it obtained a fictitious name for its business Blue Apron Catering Company gives Respondent the right to own and use the Domain Name.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements which Complainant must satisfy with respect to the Domain Name:

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

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel concludes that Complainant has rights, through registration and use, in the mark BLUR APRON. The Panel also finds that the Domain Name is confusingly similar to that mark. The Domain Name incorporates the mark in its entirety and adds the generic word “catering.” The addition of this word does not diminish the confusing similarity between the Domain Name and the mark, particularly because one familiar with Complainant’s BLUE APRON mark might conclude from the Domain Name that Complainant has expanded its food-related business somewhat to include catering services.

Complainant has established Policy paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the 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 concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. By virtue of Respondent’s failure to deny the allegation that it was aware of Complainant’s BLUE APRON mark at the time it registered the Domain Name, the record is undisputed that Respondent registered the Domain Name with such knowledge and established a website where good and services somewhat similar to Complainant’s trademarked goods and services were offered for sale. While Respondent delivers pre-cooked meals to customers, Complainant also delivers meals to its customers (who have to cook them themselves). There is enough similarity in the Parties’ businesses to suspect that consumer confusion (at least initial interest confusion) is a viable concern here. Moreover, in the Panel’s view, a consumer viewing the Domain Name would probably wonder whether Complainant had slightly expanded its business model by offering pre-cooked meals to its array of food-delivery services. Trading on the renown of another’s trademark, while offering goods and services somewhat related to those offered by a trademark owner, is not a bona fide offering of goods and services under the Policy.

Complainant has established Policy paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:

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

(ii) that Respondent has registered the 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 Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes that Respondent registered and is using the Domain Name in bad faith. The Panel finds it more likely than not that Respondent had Complainant’s BLUE APRON mark in mind when registering the Domain Name. This finding is based on three facts: (1) the BLUE APRON mark has become rather well known within the United States; and (2) Respondent also operates in the food-delivery service; and (3) Respondent did not deny Complainant’s allegation that it “is inconceivable that Respondent was unaware of Blue Apron’s rights in the BLUE APRON marks” when registering the Domain Name. In the Panel’s experience, someone in Respondent’s position vis-à-vis such an allegation must confront such an allegation head-on (“I had never heard of Complainant or its trademark”).

As noted above, the Parties’ respective product and service offerings are not as different from each other as Respondent would urge. On this record, the Panel concludes that Respondent is using the Domain Name in bad faith, within the meaning of paragraph 4(b)(iv) quoted above. The impression of bad faith is buttressed by the fact that Respondent ignored Complainant’s cease-and-desist letters for several months until the Complaint was filed in this case, whereupon Respondent promptly asked Complainant if it was interested in negotiating a purchase of the Domain Name. This conduct does not reflect the conduct of a legitimate business not seeking to capitalize on the renown of another’s trademark.

Finally, the Panel does not find plausible Respondent’s explanation why it ignored the two cease-and-desist letters. At a minimum, Respondent could have done some basic investigation into Complainant and its trademarks, whereupon it would have become clear that there was no scam afoot.

Complainant has established Policy paragraph 4(a)(iii).

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 Domain Name <blueaproncatering.com> be transferred to Complainant.

Robert A. Badgley
Sole Panelist
Date: April 26, 2017