WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Interbrand Group v. Grupo Garze

Case No. D2012-2149

1. The Parties

Complainant is Interbrand Group of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Lewis Silkin LLP, United Kingdom.

Respondent is Grupo Garze of Tlalnepantla, Mexico, represented by Enns & Archer LLP, United States of America (“US”).

2. The Domain Name and Registrar

The disputed domain name <interbrandsgroup.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 30, 2012. On October 30, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 31, 2012, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on November 13, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 3, 2012. The Response was filed with the Center on December 3, 2012.

The Center appointed Michael J. Spence, David H. Tatham and Jordan S. Weinstein as panelists in this matter on January 11, 2013. The Panel finds that it was properly constituted. Each member of 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 language of the proceedings is English.

4. Factual Background

Complainant is a global brand consultancy and part of the Omnicon Group. It was registered in the United Kingdom (“UK”) with effect from January 30, 1987 and it possesses numerous registrations of the trademark INTERBRAND. It annexed a listing of its trademark rights in 98 countries, but it specifically referred to the following: –

- Community trademark No. 208496 dated February 25, 2001;

- US trademarks Nos. 1570384 dated December 5, 1989; and 2270428 dated August 17, 1999; and

- Mexican trademarks Nos. 571478, 571479, 571480 dated March 27, 2008; and 966860 dated December 31, 1994.

It publishes a guide called “The Best Global Brands” which is often cited in legal proceedings and domain name complaints. It has also published “The Most Valuable Mexican Brands Ranked by Interbrand”.

Respondent is a holding company for companies that produce and commercialize packaging materials in Mexico, and it has been engaged in that business for more than 20 years. It has authorized Interbrands Group, LLC to use the disputed domain name. This latter is a limited liability company organized under the laws of Texas, US that shares a common ownership with the Respondent.

The disputed domain name was registered on August 9, 2011.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name <interbrandsgroup.com> is clearly identical or confusingly similar to its name Interbrand Group and to its trademark INTERBRAND. Complainant also owns the domain name <interbrand.com> through which it offers its services.

Complainant contends that the main element of the disputed domain name is the word “Interbrand” which, save for the letter S, is identical to its trademark INTERBRAND whilst the whole name is, again save for the letter S, identical to its company name. It contends that the letter S is unlikely to be noticed by the average consumer and there have been decisions under the Policy in which it has been held that the addition of a single letter is not sufficient to differentiate between a trademark and a domain name.

Complainant contends that many of the services offered by Respondent are similar or identical to its own core disciplines in relation to its brand analytics, brand strategy, brand evaluation, and retail services. Complainant has four offices in the US - in New York, San Francisco, Cincinnati and Dayton - employing in all a total of 376 people. It also has an office in Mexico City where 11 people are employed. It frequently works with American, Mexican and Hispanic brand owners.

An initial objection to the disputed domain name by Complainant’s representatives was rejected by Respondent’s representatives who maintained that Respondent’s business was completely different from that of Complainant. However Complainant strongly disagrees with this assertion and annexed a number of documents in support of its case, namely copies of pages from the website of Interbrands Group, LLC, and details of its own work with and for clients in the food industry.

Complainant further contends that Respondent has no rights or legitimate interests in the disputed domain name. This name was registered 29 years after the Complainant’s first registration of the word INTERBRAND and, although Respondent claims to have over 15 years experience in creating and supporting brands and 10 years experience in working with US and Mexican companies, this has not been under the name “Interbrands Group”.

Complainant contends that Respondent should have been aware of its name, its trademark, and its domain name given its fame and the length of time in which it has been operating in a similar field and geographical area. Complainant has not granted Respondent any right to use its name or trademark, there is no affiliation between the two parties, and consumers may be misleadingly directed to the disputed domain name when seeking Complainant or its services.

In their reply to Complainant’s initial cease an desist letter, Respondent’s representatives referred to examples of other companies using the name INTERBRAND or variations thereof. However Complainant maintains that none of them infringe Complainant’s name or trademark and in any case none of the companies in question offer – as Respondent does – services that overlap with its own.

Complainant further contends that the disputed domain name was registered in bad faith. This is because the disputed domain name was registered in 2011 following a change in Respondent’s original name (as evidenced on Respondent’s website). Although Respondent claims to have 15 years experience of creating and supporting brands, i.e. since 1999, its activities post-date Complainant’s first use of the INTERBRAND name in 1982, the opening of its offices in Mexico in 1997, and in New York in 1979. Complainant has a total of 376 employees in the US with, in addition to the above two offices, others in Cincinatti, San Francisco and in Dayton.

Complainant contends that, by registering the disputed domain name, which is largely identical to its own name and trademark, Respondent was clearly acting in bad faith. In addition, Respondent is benefitting from Complainant’s substantial goodwill in the name INTERBRAND and Respondent must have been aware of Complainant given the fact that it is the world’s largest global brand consultancy, its presence in Mexico and the US and because Respondent offers similar and overlapping services.

B. Respondent

Respondent states that its business is as a wholesaler, importer and distributor of branded products on behalf of companies in Mexico which are distributed in the US by its sister company Interbrands Group, LLC. The name was chosen as being a contraction of the words “International” and “brands” and its founders were, at the time, completely unaware of the existence of Complainant.

At the outset, Respondent admits that the disputed domain name and Complainant’s trademark are confusingly similar.

Respondent contends that it has rights and legitimate interests in the disputed domain name because it uses the disputed domain name in connection with a bona fide offering of goods and services in accordance with paragraph 4(c)(i) of the Policy. Complainant itself is based in and operates from Mexico, but in 2011 one of the founders of Respondent – a Sr. Garza – co-operated with others in founding the US company Interbrands Group, LLC which is licensed to use the disputed domain name in the US. This company, which has been active since January 2012, imports Mexican branded products into the US. The founders had never heard of Complainant and even if they had it would never have occurred to them that a global brand consultancy would be relevant to their business of importation and distribution.

Respondent further contends that its sister company, Interbrands Group, LLC, does not do any consulting and its sole revenue is derived from purchasing the products of Mexican manufacturers and reselling or distributing them in the US to approximately 30-35 different US companies.

Respondent confirms that the only communication which it has had with Complainant was a letter which was received from Complainant’s legal representatives in April 2012. It responded by offering to revise some of the wording on its website, but Complainant had already taken steps to take the website down. Respondent was only able to restore the site in May 2012.

Respondent contends that its sister company Interbrands Group, LLC has undertaken all the necessary legal steps to be able to operate in the State of Texas and has signed a number of contracts with wholesalers and distributors in the US. Respondent therefore contends that it has been engaged in real, substantial, legitimate, and bona fide use of the disputed domain name as well as of its business name, and that this is sufficient to defeat any claim not to have rights or legitimate interests in the disputed domain name. It contends that Complainant has not met the burden of proving that it does not.

With regard to the claim that it acted in bad faith, Respondent issues a number of denials:

- That it has, as set out above, been engaged in real, substantial, legitimate, and bona fide use of the disputed domain name as well as of its business name;

- That its business is quite different from that of Complainant so it has not attempted to attract Internet users to its website by creating a likelihood of confusion with Complainant trademark;

- That it has not, as claimed by Complainant, changed its original company name. Its sister company Interbrands Group, LLC was formed in 2011 as a new company and the reference on its website to years of experience relates to the founders’ business experience.

- That it is entirely plausible that the founders of Interbrands Group, LLC should never have heard of Complainant seeing that they were all engaged in an entirely different business. Furthermore, Complainant’s trademark registrations in both Mexico and the US provide no reasonable notice that any rights might extend to the wholesale distribution business;

- That there are at least four other companies in the world with names that include Complainant’s name and trademark INTERBRAND namely: A New York based company Interbrand LLC that distributes consumer goods, a Florida based company Inter-Brand, Inc. which supplies quality products and services to the hospitality industry in the Caribbean, Interbrands Wines and Spirits which is active in the Nordic countries, and Interbrands Marketing & Distribution RL a Romanian Company which is engaged in the distribution of consumer goods.

6. Discussion and Findings

Preliminary Issue

Although the Respondent in this case is a Mexican company – Grupo Garze – the Complaint is in reality directed towards the use of the disputed domain name by a US company, which is registered in the State of Texas – Interbrands Group, LLC.

Respondent has explained that this latter company shares a common ownership with itself. It is a limited liability company which was formed in August 2011 and is a wholesaler, importer, and distributor in the US of branded products from Mexican companies with a view to distributing them to Hispanic consumers in the US. Respondent owns the disputed domain name <interbrandsgroup.com> but it has authorized Interbrands Group, LLC to use it.

In this Decision, the Panel will occasionally refer to both companies jointly as “Respondent” unless the context makes it necessary to distinguish between them.

A. Identical or Confusingly Similar

The disputed domain name <interbrandsgroup.com> commences with Complainant’s registered trademark INTERBRAND. Copies of registrations of this mark in the European Community, the US, and Mexico were annexed to the Complaint, as were details of rights in this name in 98 other countries. Complainant also owns a registration of the domain name <interbrand.com> as well as 220 other domain names that include the word “interbrand”, including <interbrandgroup.com>. Complainant also annexed proof of the registration in 1987 of its company name which is identical to the disputed domain name, apart from an additional letter S and the suffix “.com”. However it is by now well established that, when comparing a disputed domain name with a trademark, a general Top Level Domain (gTLD) such as – in this case – “.com” should be disregarded. See, for example, Rollerblade, Inc, v. McCrady, WIPO D2000-0429 in which the panel found that the top level of the domain name such as “.net” or “.com” do not affect the domain name for the purpose of determining whether it is identical or confusingly similar to the complainant’s trademark.

In the opinion of the Panel, the disputed domain name is confusingly similar to Complainant’s trademark and, indeed Respondent has admitted as much.

B. Rights or Legitimate Interests

The Panel is satisfied that the Complainant has established a prima facie case under paragraph 4(a)(ii), namely that the Respondent has no rights or legitimate interests in the disputed domain name and it is well established that once a complainant has made out a prima facie case that a respondent has no rights or legitimate interests in a domain name, then the burden of production shifts to the respondent to prove otherwise. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. 741828, in which it was held that a complainant must first make a prima facie case that the respondent lacks rights or legitimate interests in a domain name under paragraph 4(a)(ii) of the Policy before the burden shifts to the respondent to show that it does have rights or legitimate interests in the domain name.

In this case, the Panel believes that Complainant has made out a prima facie case, but that Respondent has succeeded in rebutting it.

Complainant argued that there are many striking similarities between its business as a brand consultancy, particularly in the retail, food and beverage industry, and that of Respondent. Complainant annexed, for example, copies of pages that it alleged came from Respondent’s website which not only sometimes abbreviate the full name of the US company to “Interbrand” but also contain references to “Creating and managing brand value”, “Marketing Intelligence” “Brand Development”, and “Market Penetration Strategy”. All of this, Complainant alleges, are clear evidence in support of its case that Respondent lacks any rights or legitimate interest in the disputed domain name.

Respondent vehemently denies this allegation, claiming that the sole business of its sister company Interbrands Group, LLC is the distribution within the US of products from Mexican companies. Respondent therefore alleges that it has completely legitimate rights and interest in the disputed domain name and relies upon paragraph 4(c)(i) of the Policy (see below).

It is true that, as noted above, Respondent’s website does contain some references which could be read as being in competition with the services offered by Complainant, but equally these could relate to Respondents’ distributorship services in advising its customers how best to penetrate the US market. Furthermore, Respondent offered to revise the website, an offer to which Complainant did not respond.

Paragraph 4(c) of the Policy requires a complainant to demonstrate that a respondent (i) has failed to use the disputed Domain Name in connection with a bona fide offering of goods and services; (ii) has not been commonly known by the domain name; or (iii) is not making a legitimate noncommercial use of the domain name.

It was held in Infinity2 Incorporated v. Total Health Wellness, NAF Claim FA0094867 that “the purpose of UDRP Sub Paragraph 4(c )(i) is to exclude from the UDRP process cases of entities who use or prepare to use a Domain Name without knowledge that their doing so was or would be disputed”. In this case, Respondent, Grupo Garze, formed its sister company Interbrands Group, LLC in August 2011 and it began trading in January 2012. It is clear from the documents filed by Respondent that its sister company was properly constituted under the laws then valid in the State of Texas and it is also clear that it began trading in a legitimate way before Complainant filed this Complaint in October 2012.

In Metabolife International v. Spectrum Labs WIPO Case No. D2000-2509, the complaint, which had been filed in May 2000 was rejected, because, it was said: “The Panel’s view of the record persuades it that, prior to notice of the instant dispute, Respondent began use of the domain name in issue in connection with the bona fide offering of goods or services. As noted above, the domain name metabolike.com was registered by Respondent on November 25, 1998. On January 20, 1999, the articles of incorporation for Metabolike, inc, were filed. The development of the Metabolike We Site began in September 1999 and went online later that month”.

In Cognigen Networks, Inc. v. Pharmaceutical Outcomes research a/k/a Cognigen Corporation WIPO Case No. D2001-1094, relief was denied because the registration of the disputed domain name (in March 1999) and the beginning of preparations for its use (in September 2000) were both well before the dispute was filed (in September 2001).

Also, in FINAXA Société Anonyme v. Vitalie Popa WIPO Case No. D2004-0873, the complaint was denied because respondent had established prior use although the panel spent some time examining whether or not the use had been bona fide before concluding that it was.

In the circumstances therefore the Panel believes that Respondent, Grupo Grarze, has proved to its satisfaction that there is a legitimate link between itself and the US company Interbrands Group, LLC and that the use by the latter of the disputed domain name is in connection with a legitimate and bona fide offering of goods. Paragraph 4(a)(i) is therefore not proved.

C. Registered and Used in Bad Faith

In view of the above finding it is not necessary for the Panel to consider the question of bad faith although, for the record, it did not find any.

7. Decision

For the foregoing reasons, the Complaint is denied.

Michael J. Spence
Presiding Panelist

David H. Tatham
Panelist

Jordan S. Weinstein
Panelist

Date: January 24, 2013