WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bee’s Wrap LLC v. Herbert Widmer
Case No. D2020-0368
1. The Parties
Complainant is Bee’s Wrap LLC, United States of America (“United States”), represented by Tucker & Latifi, LLP, United States.
Respondent is Herbert Widmer, United States, represented by Isler & Pedrazzini AG, Switzerland.
2. The Domain Name and Registrar
The disputed domain name <beeswraps.shop> (the “Domain Name”) is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2020. On February 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 18, 2020, 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 February 24, 2020 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 February 24, 2020.
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 February 26, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 17, 2020. Respondent requested an extension of the deadline to file a Response, and the due date was extended to April 19, 2020. The Response was filed with the Center on April 17, 2020.
On April 23, 2020, Complainant submitted a Supplemental Filing comprised of further evidence of trademark registrations in numerous countries around the world. The Center acknowledged receipt and sent the following response to Complainant:
“The Rules for the Uniform Domain Name Dispute Resolution Policy ("Rules") provide for the submission of the Complaint by the Complainant and the Response by the Respondent. No express provision is made for Supplemental Filings by either party, except in response to a deficiency notification or if requested by the Center or the Administrative Panel. Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of Supplemental Filings (including further statements or documents) received from either Party. Accordingly, the Panel when duly appointed will be informed of the Center's receipt of this Supplemental Filing. It will be in the sole discretion of the Panel to determine whether to consider and/or admit the Supplemental Filing in rendering its decision, and whether to order further procedural steps, if any.”
The Center appointed Christopher S. Gibson as the sole panelist in this matter on April 27, 2020. 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.
On April 29, 2020 Respondent requested a deadline of May 15, 2020 to allow Respondent to file a supplemental submission. The request was granted by the Panel. On May 15, 2020, Respondent filed its Addendum to Response.
4. Factual Background
Launched in 2012, Complainant is the owner of the BEE’S WRAP trademarks in connection with various goods and services, including food wrappers, cloths for wrapping food, drying racks, wax treated cloth for food, and online retail services. Bee’s Wrap is the brainchild of founder Sarah Kaeck, a mother and environmentalist who had a wish to reduce plastic use in her kitchen. To manufacture its sustainable products, Complainant designed custom machinery to be able to coat organic cotton with bee’s wax in a manner that keeps the wax from flaking off, in a proprietary process that was once a hand-brushing process.
Complainant’s Bee’s Wrap products are sold at retailers worldwide, as well as online. Registrations for Complainant’s BEE’S WRAP trademarks date back to as early as November 2013. In its supplemental filing, Complainant provided evidence of its numerous trademark registrations in the United States and other countries, including Austria, Benelux, Canada, Costa Rica, Denmark, European Union, Finland, France, Germany, Hong Kong, Japan, Republic of Korea, Mexico, Norway, Sweden, Singapore, and United Kingdom. Complainant also owns a trademark registration for BEE’S WRAP in Switzerland with Registration No. 1265415, dating from August 3, 2015, with the registration complete as of August 17, 2016. Complainant owns the domain name <beeswrap.com>.
The Domain Name was registered on February 9, 2019. It currently redirects to a website at “www.nutsinnovations.shop”, where the content is presented in German and the site sells bee’s wax-coated cotton wraps and related products. The website also links to a website at “www.nuts-innovations.com”, where the brand “nuts” is used and the content is presented in English, and the site also sells bee’s wax-coated cotton wraps and a range of other related products (e.g., vegan wraps, storage containers, and nuts).
As compared to the WhoIs registration data for the Domain Name, which shows Respondent to be located in Las Vegas, Nevada in the United States, Respondent identifies itself as two parties: Herbert Widmer and Nuts Innovations AG, a Swiss jointstock company (“Nut Innovations”), both located in Stäfa, Switzerland. Respondent provided evidence that it offered to enter into negotiations with Complainant about an amicable settlement of this dispute in a letter dated March 3, 2020. Complainant did not respond to the letter.
5. Parties’ Contentions
(i) Identical or confusingly similar
Complainant states that long after Complainant established rights in its BEE’S WRAP trademarks and service marks, Respondent registered and began using the Domain Name, which is similar to Complainant’s marks.
Complainant contends that Respondent uses the Domain Name in connection with the URL “www.beeswraps.shop”, linking to Respondent’s website at <nutsinnovations.shop>, which is an online store that sells products confusingly similar to those of Complainant’s sold on Complainant’s website at “www.beeswrap.com”. Complainant asserts that Respondent’s intent is to trade off the goodwill of Complainant’s BEE’S WRAP marks by selling similar-looking but inferior products on the site linked to the Domain Name, in an attempt to confuse consumers into thinking they are buying Complainant’s genuine products.
(ii) Rights or legitimate interests
Complainant states that it has not authorized nor licensed Respondent to use Complainant’s registered BEE’S WRAP trademarks and service marks, and that Respondent has no right to use the marks. Further, Complainant asserts that Respondent is not commonly known by the Domain Name, and there can be no legitimate business reason for Respondent to own and/or use the Domain Name, aside from wrongfully leading the public to believe that Respondent’s site is associated with, authorized by or sponsored by Complainant. There can be no legitimate business reason provided by Respondent for using Complainant’s BEE’S WRAP trademark for Respondent’s Domain Name.
(iii) Registered and used in bad faith
Complainant contends that by using the Domain Name, Respondent is intentionally attempting to attract for commercial gain Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s BEE’S WRAP trademarks and service marks to falsely create the impression that the Domain Name offers Complainant’s goods at a substantial discount, which is far from reality. Respondent is trying to fool the marketplace into believing that its site is that of Complainant or somehow affiliated with Complainant. Thus, Complainant believes the Domain Name has been registered and is being used in bad faith, solely to create a likelihood of confusion in the marketplace. In this way, the operation of the Domain Name closely resembles the scheme employed by the respondent in the cases, 13 Rattles, Inc. v. Thomas Zimmermann, WIPO Case No. D2017-2134 and 13 Rattles, Inc. v. Li Wei, WIPO Case No. D2018-0058.
Complainant urges that an Internet user entering the Domain Name and finding Respondent’s website advertising and selling products that are seemingly like Complainant’s products being sold in a manner and style used on Complainant’s site is likely to believe that she or he had reached Complainant’s website and may cease searching for Complainant’s own site, to Complainant’s detriment, which is an act of bad faith.
Complainant contends that Respondent has wrongfully used the BEE’S WRAP mark to mislead the public and drive visitors to its website, thus attempting to generate commercial gain by creating confusion with BEE’S WRAP mark as to the source, affiliation, or endorsement of Respondent’s website.
(i) Identical or confusingly similar
Respondent disputes that the trademark and service marks submitted by Complainant confer on Complainant the exclusive right to use the commonly used expression "bees wrap" in any jurisdiction. Respondent contends that, from the beginning, all of these trademarks lack distinctiveness for the goods and/or services claimed, and, this is true even more at the present time, through the terms’ common use for the subject products since their introduction.
(ii) Rights or legitimate interests
Respondent rejects the allegations made by Complainant as to why Respondent should be considered as having no rights or legitimate interests in respect of the Domain Name. Respondent claims that through the company, Nuts Innovations, Respondent has used the Domain Name in connection with a bona fide offering of goods according to Paragraph 4(c)(i) of the Rules, in particular goods made from bees wax-impregnated cloths. Respondent claims Respondent is entitled to use the Domain Name by using a term combined from generic words to describe their products to profit from the generic value of such term.
Respondent asserts that Nuts Innovations, the company operating through the website linked to the Domain Name, introduced its bee’s wraps products in February 2019 at the Ambiente consumer goods trade fair in Frankfurt, Germany. Initially, the company intended to distribute its products as a private label for other brands only, but due to the positive reactions of the public, Nuts Innovations decided to distribute the wraps also under their own label, “nuts”. Respondent’s company has developed an assortment of twelve different sets of wraps and started to distribute products in August 2019 from a warehouse in Kulmbach, Germany. Since then, the company has expanded its assortment. Since autumn, they have added vegan wraps as well as rolls. In the future, Nuts Innovations plans to expand its assortment with products connected to the sustainable storage of foodstuffs.
Respondent states that the Domain Name was registered for Respondent in February 2019 by Respondent’s daughter at Respondent’s vacation home address during her studies in Las Vegas, United States. Respondent claims that his daughter had not known of Complainant or Complainant’s brands at the time of the registration, but only registered the Domain Name because of the common use of the term "bees wraps" for the bee's wax wraps she intended to sell through an online store that she created with the WIX shop software. She wanted to earn money to finance her studies in the United States, but ended up having no time to do so. Respondent states that after her return to Switzerland, she completed the web-shop for Nuts Innovations. Respondent claims that since then, Nuts Innovations offers its products on its website under the Domain Name, at first in English and then in German, as it makes 99 per cent of its sales in the German speaking countries, and thus the shop exists only in German.
Respondent claims Respondent never intended to trade off the goodwill of Complainant, and that neither Respondent nor his daughter have even known about Complainant’s existence or Complainant’s brands.
Respondent contends that "bees wraps" (or "bees wrap" in the singular) is a term combined from two generic words directly describing the products for sale at the website linked to the Domain Name, i.e., goods made from bees wax-impregnated cloths. Respondent argues that according to the practice under the UDRP, Respondent is entitled to use the term "bees wraps" combined from these two essential words for their products, in this combination and any other, as numerous competitors in the market have done so. In this regard, Respondent points to the following domain names, which use these terms in different forms:
<beewraps.co.uk> – redirected to – <beegreenwraps.co.uk>
<beewrap.fr> – redirected to – <wrapi.be>
<beewraps.eu> – redirected to – <woskowijki.pl>
<beeswrap.info> – redirected to – <bienenwachstuch.info>
<beeecowraps.com> – redirected to – <beeswrap.naturlieferant.de>
Further, Respondent claims that a simple search for the hashtag “#beeswrap” on Instagram reveals not less than 19,637 results. In addition, a search for the term "bees wraps" on ETSY reveals 4,055 results. Respondent argues that all this shows that the term "bees wraps" is in common use for subject goods and that Respondents has a legitimate interest to register and use the Domain Name.
(iii) Registered and used in bad faith
Respondent denies Complainant's allegations of registration and use in bad faith. Respondent states that the Domain Name was not registered in an intentional attempt to attract for commercial gain, Internet users to Respondents' website or other on-line location, by creating a likelihood of confusion with Complainant's mark. Respondent states that, as shown above, Respondent’s daughter registered the Domain Name to describe the products and to profit from the generic value of the word combination, just as a lot of other competitors in the market do. Further, Respondent states that because Respondent generates 99 per cent of its revenues in German speaking countries, his competitors are German and Austrian companies, the main competitors being:
- in Germany:
- in Austria:
Respondent states that, next to these companies, there are more than a hundred companies that also sell products from bees wax-impregnated cloths. Respondent rejects Complainant’s allegation that Respondent tries to create a likelihood of confusion with the products of Complainant: Respondent claims that he just sells products made of bee’s wax-impregnated cloths as a large number of other vendors on the market do and he has no interest to create a likelihood of confusion with the products of Complainant. Respondent further asserts that the products substantially differ from Complainant's products. Finally, Respondent rejects the allegation that Respondent’s products are of an inferior quality.
In its Addendum to its Response, Respondent requests that the Panel ignore the documents submitted by Complainant on May 23, 2020 because the Rules do not provide for unsolicited additional filings and such filings are inconsistent with the character of the UDRP proceedings as simple and rapid proceedings. Respondent states, however, that should the Panel consider the additional documents filed by Complainant, Respondent disputes that any trademarks consisting of or containing the word elements “bee’s wrap/ bees wrap/ bees wraps” confer to Complainant the exclusive right to use the commonly used expressions in any jurisdiction. All such marks lack distinctiveness for the goods and services claimed from the moment of their registration, and even more so now, after years of common use of the expression “bee’s wrap / bees wrap/ bees wraps” for the products in question.
6. Discussion and Findings
In order to succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
A. Supplemental filing
Before proceeding to the substance of the dispute, the Panel rules on the admissibility of the Complainant's Supplemental Filing.
Paragraph 12 of the Rules empowers the Panel of its own motion to request further statements or documents from the parties. The Policy does not otherwise contemplate further documents in the proceeding apart from the Complaint and the Response.
Paragraph 10 of the Rules, however, gives the Panel a wide discretion relating to procedural matters subject to an overriding requirement to ensure that parties are treated equally and given a fair opportunity to present their respective cases. Consistent with the objective of providing an efficient and effective online dispute resolution mechanism, paragraph 10(c) directs the Panel to ensure that the proceeding takes place with due expedition. Paragraph 10(d) empowers the Panel to determine the admissibility, relevance, materiality and weight of the evidence.
Typically, an unsolicited supplemental filing is permitted to address some matter raised in the Response that could not reasonably have been anticipated. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), Section 4.6. Here, the Complainant submitted evidence of additional trademark registrations in countries around the world.
The Panel is prepared to admit Complainant’s supplemental filing and Respondent’s Addendum to the Response in the interests of ensuring the parties have been afforded a fair opportunity to put forth their respective cases.
B. Identical or Confusingly Similar
The Panel finds that Complainant has established rights in its BEE’S WRAP trademarks, based on ownership of the trademarks’ registrations in numerous countries and use of the marks in commerce. Further, the Panel determines that the Domain Name is identical or confusingly similar to the BEE’S WRAP marks. Section 1.7 of the WIPO Overview 3.0, states that the test of confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name”. Here, the Panel determines that Domain Name is confusingly similar to Complainant’s BEE’S WRAP trademarks. The Domain Name merely adds an “s” to the second of the two words which comprise Complainant’s BEE’S WRAP trademarks. The use of the Top Level Domain “.shop” does not alter this analysis.
Accordingly, the Panel finds that that the Domain Name is confusingly similar to a trademark in which Complainant has rights, in accordance with paragraph 4(a)(i) of the Policy. Complainant has satisfied the first element of the Policy.
C. 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.”
Here, Complainant has provided evidence to establish that it has registered trademark rights in its BEE’S WRAP marks in numerous countries, including in the United States and Switzerland where Respondent maintains either his (daughter’s) college/vacation home and the location of his Nut Innovations company, respectively. Moreover, Complainant has alleged that the Domain Name has been used to link to a website operated by Respondent that sells products confusingly similar to those of Complainant. Further, Complainant has confirmed that it has not authorized or licensed the use of its BEE’S WRAP trademarks to Respondent or to the Nut Innovations company. In addition, Complainant’s assertion that Respondent is not commonly known by the Domain Name appears to be correct. In fact, Respondent has confirmed that its company is named Nut Innovations. Moreover, the Domain Name re-directs to a website at “www.nutsinnovations.shop”, and it appears that Respondent’s English language website is branded “nuts” and is located at “www.nuts-innovations.com”. Thus, neither of Respondent’s websites use domain names or branding relating to the terms in the Domain Name, namely “bees wraps”.
Respondent has explained that his daughter registered the Domain Name. It is unclear how this explanation in any way supports Respondent’s claim to a right or legitimate interest in the Domain Name, or otherwise implies a lessening of responsibility on the part of Respondent. If anything, it undercuts Respondent’s case as it seems intended to obfuscate the core issue of whether Respondent has inappropriately targeted Complainant. Indeed, just as Respondent has referenced searches on Instagram and ETSY in support of the argument that the Domain Name is composed of generic terms, Respondent (and his daughter) could have completed online searches of relevant trademark databases in the United States (where the Domain Name was registered) and Switzerland (where Respondent’s company is located), as well as a Google search, to identify and consider Complainant’s rights in its BEE’S WRAP trademarks and brand when registering the Domain Name.
Respondent contends that his rights or legitimate interests derive from the claimed generic words in the Domain Name, which serve to describe the products for sale at the website linked to the Domain Name, i.e., goods made from bee’s wax-impregnated cloths. It appears that Respondent does operate a company making a genuine offering of these goods; however, the goods are in general similar to, and competitive with, those offered by Complainant. WIPO Overview 3.0, section 2.10.1 provides in relevant part that:
“Panels have recognized that merely registering a domain name comprised of a dictionary word or phrase does not by itself automatically confer rights or legitimate interests on the respondent; panels have held that mere arguments that a domain name corresponds to a dictionary term/phrase will not necessarily suffice. In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights.”
Respondent has provided evidence of domain names and websites operated by third parties using the similar terms; however, the Panel has reviewed the references provided by Respondent and has found them to be inconclusive in supporting Respondent’s claim that the term “bees wraps” (as compared to “beeswax wrap” or cloth or covering, etc.) is generic or has a descriptive meaning, apart from reference back to Complainant’s trademark. At best, in the Panel’s view Complainant’s mark can be considered descriptive or suggestive. Moreover, any conduct (domain name registrations or use of confusingly similar brands) by third parties that might infringe on Complainant’s BEE’S WRAP trademarks would not serve to exonerate Respondent; moreover, such third-party domain name registrations do nothing to aid Respondent in answering the question of his knowledge of and intent to target Complainant. As noted above, Respondent’s company is named Nut Innovations, not “bees wraps”. Moreover, the only online definition that the Panel was able to discover for terminology close to the terms “bee’s wrap” or “bee’s wraps” (other than searches that linked directly back to Complainant’s website) was a Wikipedia reference for “beeswax wrap”. See WIPO Overview 3.0, section 4.8 (“it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision”).
In view of all of the circumstances discussed above, this case presents a close call; however, the Panel finds, on the balance of the probabilities, that Complainant has carried its burden on this element.
D. 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 Name 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 determines, on the balance of the probabilities, that Complainant has failed to establish that the Domain Name was registered in bad faith. Respondent has denied that he and his daughter were aware of the existence of Complainant and its BEE’S WRAP trademarks when registering the Domain Name, and given the descriptive or suggestive nature of Complainant’s mark, stronger evidence of Respondent’s intent and knowledge of Complainant’s mark would be required than is normally possible in proceedings under the Policy. Given that Respondent is redirecting the Domain Name to his “nuts”-branded website, this does raise an inference that this is the case, but on the record before the Panel such evidence is not conclusive. It would have been for Complainant to provide evidence of claimed acquired distinctiveness (also referred to as secondary meaning) by reference, e.g., to sales figures and commercial reach across jurisdictions, the nature and extent of advertising using the mark, the degree of actual public recognition (whether by consumers, industry, media), etc. While the Panel notes that towards the bottom of Complainant’s homepage there are names of various media outlets listed (Food & Wine, Outside, New York, Epicurious, Eating Well, and the Los Angeles Times) under the heading “The Buzz is Real”, Complainant has not even itself put this into evidence, let alone expanded on references to its mark and products in such publications.
Further, while Complainant’s earliest trademark registration dates from 2013 (and others date from 2015), there is insufficient evidence presented in this case of accrued goodwill and recognition associated with Complainant’s BEE’S WRAPS trademarks, such that it can be presumed that Respondent (or his daughter) targeted Complainant and its marks. Further, in line with this analysis, the evidence is simply insufficient to establish that Respondent is taking unfair advantage of or otherwise abusing Complainant’s marks. In is true that Respondent offers products in the same product category as Complainant, but many other companies do as well. The Panel finds that the claim that Respondent’s website attempts to impersonate Complainant’s site is a close call given that many sites are built nowadays with similar website builder software; again, Complainant cannot rely on mere allegations but would need to support such claim with additional evidence for the Panel to find in its favor.
Finally, unlike the two UDRP cases cited by Respondent, there is simply insufficient evidence presented in this case that Respondent knew of Complainant and its BEE’S WRAP trademarks. See 13 Rattles, Inc. v. Thomas Zimmermann, WIPO Case No. D2017-2134 (the respondents were “fully aware of the Complainant and its trademark and has registered and used the disputed domain name comprising the Complainant’s mark with the aim of diverting Internet traffic, by creating the impression of being affiliated with the Complainant”) and 13 Rattles, Inc. v. Li Wei Wei, WIPO Case No. D2018-0058 (“The Respondent clearly knew of the Complainant when it registered the disputed domain name – it uses the disputed domain name to sell apparently counterfeit products of the Complainant.”).
The Panel finally notes that the UDRP is intended to provide an international and uniform policy across top-level domains for resolving disputes between trademarks owners and domain name registrants, and this point is further supported because the Policy, on the one hand, and local laws (and related procedures) as to cybersquatting and trademark infringement, on the other hand, are different in several important respects, such that a set of facts might conclusively establish trademark infringement under domestic law, yet not be considered bad faith registration and use under the Policy, and vice versa. See Green Bay Packers, Inc. v. Moniker Privacy Services / Montgomery McMahon, WIPO Case No. D2016-1455. With this in mind, the Panel observes that Complainant remains free to pursue its claims, including as to possible trademark infringement, dilution or tarnishment, in the courts, which would allow for a fuller examination of the relevant facts and circumstances.
In conclusion, in view of all of the above circumstances, this case presents a close call under the third element of the Policy. However, while there are factors which raise an inference in its favor, Complainant has ultimately failed to satisfy its burden under the Policy’s third element.
For the foregoing reasons, the Complaint is denied.
Christopher S. Gibson
Date: June 2, 2020