WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Blue Apron, LLC v. WhoisGuard Protected, WhoisGuard, Inc. / Jason Blackmon
Case No. D2017-1000
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 WhoisGuard Protected, WhoisGuard, Inc. of Panama, Panama / Jason Blackmon of Austin, Texas, United States.
2. The Domain Name and Registrar
The disputed domain name <blueapron.reviews> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2017. On May 19, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, the Registrar transmitted by email 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 email communication to Complainant on May 24, 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 May 24, 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 May 31, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 20, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 21, 2017.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on June 27, 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.
4. Factual Background
Complainant is a subscription-based meal delivery service that provides customers with original recipes and pre-portioned ingredients needed to prepare these recipes at home. Complainant delivers millions of meals each month to its customers throughout the United States, introducing them to new ingredients, flavors, and cooking techniques. Complainant’s business has experienced growth and its brand has achieved recognition in the context of ingredient and recipe delivery. Complainant is acknowledged as an industry leader and innovator in this market, and has been lauded by press outlets including “Fortune”and “Business Insider”for its quality ingredients and the variety of its products.
Since 2012 Complainant has used the name “Blue Apron” to distinguish its recipe- and ingredient-delivery products and services from those offered by others. Complainant owns United States federally registered trademarks for BLUE APRON (Reg. Nos. 4,417,957; 4,919,034 and 4,956,738), along with related pending applications in the United States and in several countries and jurisdictions around the world. Complainant first began using the BLUE APRON mark in commerce in 2012, and first obtained registration of its mark on October 15, 2013 (Reg. No. 4,417,957). Complainant also owns several domain names containing the “Blue Apron” name, including <blueapron.com>, <blueapron.org>, <blueapron.us>, and <blueapron.review>.
The Domain Name was registered on March 23, 2016. The Domain Name resolves to a website displaying reviews of Complainant and its services and links to inter alia Complainant’s competitors’ websites.
5. Parties’ Contentions
(i) Identical or confusingly similar: Complainant submits that it has extensively promoted, advertised, and used its BLUE APRON mark on its website and in TV advertisements. BLUE APRON is also used by Complainant as its business name and therefore functions as both a trademark and a trade name. Complainant states that its intellectual property is an integral part of its business and corporate identity, has become famous, and is readily identified with its products and services. As a direct result of its promotional efforts and dedication to providing quality products and services, the BLUE APRON mark is favorably recognized and relied upon by the relevant consuming public as indications of high-quality goods originating exclusively from Complainant. Complainant claims that due to these efforts, its mark has earned valuable goodwill, which substantially increases the value of its business and services. Complainant closely controls and monitors the use of its BLUE APRON mark, and no parties other than Complainant market its goods and services under the BLUE APRON mark. Complainant began using the BLUE APRON mark in commerce in 2012, and obtained its first federal registration of its mark in October 2013, prior to the registration of the Domain Name in March 2016.
Complainant states that the Domain Name fully incorporates and is confusingly similar to Complainant’s BLUE APRON mark. The Domain Name is confusingly similar to the BLUE APRON mark because it incorporates the entirety of the mark. Moreover, BLUE APRON is not only Complainant’s trademark, but also its business and trade name. Complainant argues that numerous courts and prior UDRP panels have recognized that the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark.
Complainant contends that Respondent cannot justify its use of the BLUE APRON mark on the basis that the marks are comprised of two commonly used words, “blue” and “apron”. Additionally, Complainant states it is well established that the specific generic Top-Level Domain (“gTLD”), such as “.com” or “.reviews,” does not affect a disputed domain name for the purpose of determining whether it is identical or confusingly similar to a complainant’s trademark.
Complainant explains that Internet users who intend to visit Complainant’s website for purposes of utilizing or learning more about Complainant’s meal delivery services may type “Blue Apron” into the search bar of their web browser, only to be misdirected to the Domain Name and its linked website. Having arrived at the site, Internet users would be confused as to whether they had reached Complainant’s official site, or whether Complainant is affiliated, associated with, sponsors, or endorses Respondent’s site. Respondent is taking advantage of Internet users’ “initial interest confusion” for its own commercial advantage. Complainant contends such activities are illegal because Respondent is capitalizing wrongfully on Complainant’s goodwill in its BLUE APRON mark for the purpose of diverting Internet traffic to Respondent’s website.
(ii) Rights or legitimate interests: Complainant contends that Respondent has no rights or legitimate interests in the Domain Name and is not using it for any bona fide or otherwise fair purpose. The BLUE APRON mark belongs exclusively to Complainant. Respondent is not a licensee of Complainant, nor has Respondent obtained permission, either express or implied, from Complainant to use the BLUE APRON mark in a domain name, or in any manner likely to cause consumer confusion. Moreover, there is no evidence that Respondent has ever been commonly known by the Domain Name.
Complainant states there is no evidence that Respondent has ever operated any bona fide or legitimate business under the Domain Name, and Respondent is not making a protected noncommercial or fair use of it. While the website appears to provide opinions and commentary regarding Complainant’s services, this is not the only use to which the site has been put by Respondent: the site also prominently displays Complainant’s name, branding, and information, and contains extensive advertising from which it is reasonable to infer Respondent earns or has sought to earn affiliate advertising revenue. Respondent’s site, much like Complainant’s site, features high-quality photographs of Blue Apron food and ingredients; full recipes for Blue Apron meals; instructions and tips related to the preparation of such meals; and a link to sign up for Complainant’s home delivery service. The site also displays affiliate advertisements for Blue Apron, which were not placed by Complainant, as well as affiliate advertisements for Complainant’s competitors. Complainant asserts that Respondent’s use of the BLUE APRON mark attracts Internet users to Respondent’s site by creating a likelihood of confusion with Complainant’s marks, generating the false impression that the site is somehow affiliated with or endorsed by Complainant, or that Complainant somehow sponsors, endorses, or approves of the competing services advertised on the site. Even if Respondent’s site was only an opinion or commentary website, which it is not, Respondent still would not be entitled to use the BLUE APRON mark in its Domain Name.
Complainant states that it welcomes customer feedback, as it assists Complainant with improving customers’ experiences with Complainant’s services. However, Complainant is concerned that Respondent’s extensive use of the BLUE APRON mark, which constitutes neither noncommercial nor fair use, serves primarily to trade off of Complainant’s brand and name, to the commercial benefit of Respondent and to the detriment of customers. Complainant urges that Respondent’s activities do not give Respondent the right to register and use the BLUE APRON mark as a domain name without the consent of Complainant.
(iii) Registered and used in bad faith: Complainant contends that the Domain Name was registered and is being used in bad faith by Respondent. Concerning registration in bad faith, Complainant claims Respondent was aware or must have been aware of Complainant’s BLUE APRON mark when Respondent registered the Domain Name. Respondent could not plausibly assert that, in registering the Domain Name, it was unaware of Complainant’s rights in the BLUE APRON mark, especially where Respondent has fully incorporated the BLUE APRON mark into the Domain Name. Respondent is also deemed to have constructive knowledge of Complainant’s trademark rights by virtue of Complainant’s federal registrations for its BLUE APRON mark. In addition, the contents of, and disclaimer placed on, Respondent’s website demonstrate Respondent’s awareness of Complainant’s rights in its BLUE APRON mark.
Complainant claims that with this awareness, Respondent selected the Domain Name incorporating the entirety of the BLUE APRON mark to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation or endorsement of Respondent’s own website, in violation of the Policy. Additionally, while use of a privacy service does not in and of itself constitute bad faith under the Policy, the manner in which such service is used may contribute to a finding of bad faith.
Further with regard to bad faith use, Complainant argues that it is well-settled among UDRP panelists that Respondent’s method of infringement – using the exact BLUE APRON mark to misdirect consumers to Respondent’s site – demonstrates bad faith use under the Policy. As discussed above, in addition to traditional likelihood of confusion, Respondent’s use of the Domain Name also creates initial interest confusion, which attracts Internet users to Respondent’s site based on Respondent’s use of the BLUE APRON mark, and is further evidence of Respondent’s bad faith use of the Domain Name.
Complainant states that Respondent cannot defend its registration and use of the Domain Name by noting the disclaimers that appear on its website, as such disclaimers do not dispel the initial confusion on which Respondent relies to attract visitors to its site. Moreover, the ineffectual disclaimer displayed on the original version of the site appeared in small text and was placed “below the fold” (i.e., at the very bottom, visible only by scrolling down) of only one of the site’s webpages. The current version of the site fails to include any disclaimer whatsoever.
Complainant submits the content of Respondent’s website appears designed to reinforce an Internet user’s impressions that the Domain Name belongs to, or is affiliated with, Complainant. Advertisements displayed on the site imply that Respondent is authorized to provide discounts to customers on behalf of Complainant; the site displays Complainant’s logo (white text and a white apron against a blue background); and lists Complainant’s contact information and FAQs, including questions concerning skipping or cancelling a Blue Apron subscription. Moreover, Respondent maintains several social media handles called “@blueapronreview” on Twitter and “Blue Apron Reviews” on Facebook. These pages mislead the public into thinking that Respondent is associated with, endorsed by, or otherwise affiliated with Complainant, and they entice the visitor to visit Respondent’s website. Having arrived to the site from one of Respondent’s social media pages would serve only to enhance the level of confusion connected to Respondent’s maintenance of its site. The confusion resulting from such gratuitous and pervasive use of Complainant’s intellectual property is grounds for a finding of bad faith use under the Policy.
Complainant emphasizes Respondent’s site concomitantly creates another type of confusion, as it displays advertising that, in certain instances, has nothing to do with Complainant (reflecting advertisements for Complainant’s competitor, “Green Chef”, displayed on Respondent’s site). Respondent’s actions will damage the BLUE APRON marks and Complainant’s assets, and Respondent must have expected that any use of the Domain Name would cause such harm to Complainant. Complainant maintains the Domain Name is so “obviously indicative” of Complainant’s services that Respondent’s use would, at a minimum, inevitably lead to confusion of some sort, to the severe detriment of Complainant and its goodwill. Furthermore, commercial harm may well be suffered by Complainant if Internet users abandon their efforts to reach its website, or opt to instead utilize a competitor’s services advertised on the site.
In sum, Complainant asserts that it has satisfied the third requirement of the Policy, and the Panel should determine that Respondent registered and used the Domain Name in bad faith, according to paragraphs 4(a)(iii) and (b)(iv) of the Policy. Based on the foregoing, Complainant requests the transfer of the Domain Name to avoid further unauthorized and disruptive activities.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Paragraph 15(a) of the Rules provides that the Panel will decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain a decision (as it has requested) that the Domain Name be transferred to it:
(i) The Domain Name registered 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 with respect to 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 determines that Complainant has strong rights in its BLUE APRON trademark, based on the evidence of Complainant’s trademark registrations, as well as the use and widespread promotion of the BLUE APRON mark in the United States since its first use in 2012.
The Panel finds that the Domain Name is identical to Complainant’s BLUE APRON trademark. The fact that Complainant’s mark is comprised of two commonly used words, “blue,” and “apron” does not weaken this conclusion – it is the combination of the two terms in the trademark and their application in a particular field of commerce that supports their distinctiveness. See Fleming Sales Company, Inc. v. David Marketing Group, WIPO Case No. D2006-1174 (where infringing domain name incorporated entirety of complainant’s PATIOHEARTH mark, no defense that “patio” and “hearth” are commonly used terms). Moreover, the “.reviews” gTLD is irrelevant to the analysis. As stated by section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “[t]he applicable Top Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.” See LACOSTE and LACOSTE ALLIGATOR SA v. Domain Manager, WIPO Case No. D2016-2181 (the domain name <lacoste.feedback> is identical to the trademark in which the complainants have rights, disregarding the gTLD “.feedback”).
Accordingly, Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Regarding the second element of the Policy, WIPO Overview 3.0, section 2.1, states that “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Panel finds that Complainant has made out a prima facie case that Respondent has no rights or legitimate interests with respect to the Domain Name, while Respondent has failed to submit a Response. The Panel observes that Respondent is not commonly known by the Domain Name, and Complainant has not authorized Respondent to use Complainant’s BLUE APRON mark in the Domain Name or on Respondent’s website. Complainant has submitted evidence that Respondent is using the Domain Name, which is identical to Complainant’s BLUE APRON mark, to attract visitors to its site by impersonating Complainant, while providing advertising and links (including to several of Complainant’s competitors) from which it may be inferred that Respondent seeks to obtain commercial gain. Respondent uses Complainant’s trademark and logo on the website itself, along with content that reinforces an impression that the Domain Name belongs to, is affiliated with, or endorsed by Complainant. In particular, beyond the use of Complainant’s BLUE APRON mark and logo on the site, the content of the site suggests that Respondent is authorized to provide discounts to customers on behalf of Complainant; lists Complainant’s FAQs and contact information; and includes questions concerning skipping or cancelling a Blue Apron subscription – all of which may mislead visitors to mistakenly believe that Respondent’s site was either created, authorized or endorsed by Complainant. Respondent’s site originally included a disclaimer at the bottom of one of its webpages, but that was subsequently removed. At the same time, Respondent’s website contains advertising, including advertisements for Blue Apron that were not authorized by Complainant, and advertising for several of Complainant’s competitors.
WIPO Overview 3.0, section 2.5.1 states that, as to the domain name itself, “[g]enerally speaking, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation.” Respondent’s website purports to be a review site. However, WIPO Overview 3.0, section 2.6.2 states that “even a general right to legitimate criticism does not necessarily extend to registering or using a domain name identical to a trademark (i.e., <trademark.tld> (including typos))…” Section 2.6.2 also states that “[i]n certain cases involving parties exclusively from the United States, some panels applying US First Amendment principles have found that even a domain name identical to a trademark used for a bona fide noncommercial criticism site may support a legitimate interest.” However, in the present case, a review of Respondent’s website shows that it is clearly designed for commercial gain.
In sum, the Panel finds that Respondent’s use of the BLUE APRON mark in the identical Domain Name attracts Internet users to Respondent’s site by creating a likelihood of confusion with Complainant and its marks, generating the false impression that the site was created by or somehow affiliated with or endorsed by Complainant. In the circumstances of this case, Respondent’s use of the Domain Name does not give rise to any right or legitimate interest in the Domain Name. See e.g., LACOSTE and LACOSTE ALLIGATOR SA v. Domain Manager, supra (“The fact that the Respondent creates confusion between it and the Complainants by (i) extensively reproducing the LACOSTE trademarks including the famous crocodile logo, (ii) providing links to official Lacoste website and social networks, and (iii) reproducing only the best consumer reviews copied from another website and changing the posted dates of same, supports the Complainants’ claim that this apparent usage is not a legitimate noncommercial or fair use. The Panel notes that the appearance of the <lacoste.feedback> website and the consumer reviews are extremely suspicious. It provides strong support to the Complainants’ allegation.”).
Accordingly, Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Names in bad faith. WIPO Overview 3.0, section 3.1, states that “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”.
Here, the Panel finds there is clear evidence that Respondent targeted Complainant’s BLUE APRON trademark when it registered the Domain Name, which includes the mark in its entirety and is identical to the mark. Further, the Domain Name has been used to take unfair advantage of Complainant’s BLUE APRON mark. As discussed in detail above, Respondent registered the Domain Name for purposes of using it for a review website, while including content on that site that may mislead visitors to mistakenly believe the site was either created, authorized or endorsed by Complainant. At the same time, Respondent’s website contains extensive advertising, including links to Complainant’s competitors. See Aktiebolaget Electrolux v. Sawan Yaisang, WIPO Case No. D2013-0119 (finding bad faith use of domain name where the website displayed sponsored advertisements redirecting users to unrelated third-party sites).
The Panel concludes that Respondent’s registration and use of the Domain Name – using the exact BLUE APRON mark (that is so obviously indicative of Complainant’s services) to misdirect users to a review website that comes close to impersonating Complainant’s own site – constitutes bad faith under paragraph 4(b)(iv) of the Policy. The use of a disclaimer by Respondent does nothing to change the Panel’s determination in this regard. See WIPO Overview 3.0, section 3.7 (“[…] where the overall circumstances of a case point to the respondent’s bad faith, the mere existence of a disclaimer cannot cure such bad faith.”); LACOSTE and LACOSTE ALLIGATOR SA v. Domain Manager, supra (the presence of a disclaimer on the respondent’s <lacoste.feedback> site did not cure bad faith).
The Panel determines that Complainant has satisfied the third element of the Policy.
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, <blueapron.reviews>, be transferred to Complainant.
Date: July 15, 2017