WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
HelloFresh SE v. Ildar Akhmedyanov, Private Person
Case No. D2021-1159
1. The Parties
The Complainant is HelloFresh SE, Germany, represented by Bird & Bird LLP, Germany.
The Respondent is Ildar Akhmedyanov, Private Person, Russian Federation.
2. The Domain Names and Registrar
The disputed domain names <hellofresh.space> and <hellofresh.website> are registered with Registrar of Domain Names REG.RU LLC (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2021. On April 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 16, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Registrar email of April 16, 2021 identified Russian as the language of the registration agreement for the disputed domain names. On April 21, 2021, the Center issued a notification to the Complainant advising that the language of the registration agreement (Russian) differed from the language of the Complaint (English) and inviting the Complainant to submit a Russian translation of its Complaint or present arguments or evidence in favor of conducting the proceeding in the English language. The Complainant responded on the same day by verifying its request to proceed in the English language based upon publication of the registration agreement in both the Russian and English languages, the fact that the disputed domain names displayed content in English, and its belief that translation of the Complaint into Russian would result in unnecessary delay.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 20, 2021.
The Center appointed Clark W. Lackert as the sole panelist in this matter on June 4, 2021. 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
The Complainant owns multiple registrations for HELLOFRESH in word form including rights recognized in the European Union, the Russian Federation, Canada, Australia, New Zealand, Norway, Japan, South Korea, and the United States of America. The Complainant’s HELLOFRESH marks are registered and used for food products and services in International Classes 29, 31, 35, and 43 (among others) including custom assembly and delivery of meal-kits for preparation and consumption at home. For example, the Complainant registered International trademark no. 1261986 on March 10, 2015, designating various jurisdictions including the Russian Federation.
The Complainant is a publicly traded company and is designated by its HelloFresh SE trade name. The Complaint cites broad recognition of the HELLOFRESH trademarks based upon the Complainant’s use of these marks for a decade and its delivery of approximately 600 million meals to over five million customers in the past year.
Consumers are able to place orders for Complainant’s HELLOFRESH branded goods and services via various websites registered and maintained by the Complainant under its HELLOFRESH trademark. One such website address is “www.hellofresh.co.uk” which features images of various foods and services offered by the Complainant under its HELLOFRESH trademark.
The record shows that the disputed domain names <hellofresh.space> and <hellofresh.website> were both registered on March 30, 2021. The disputed domain names have been used to promote content resembling pages presented on the Complainant’s “www.hellofresh.co.uk” website. The Complainant contacted the Registrar expressing its concern regarding potential abuse, and the content was removed from the disputed domain names thereafter.
5. Parties’ Contentions
The Complainant argues that the disputed domain names are identical to its HELLOFRESH trademarks because each has been composed by adopting the HELLOFRESH mark in its entirety and combining this mark with the Top Level-Domains (“TLDs”) “.website” and “.space”. The Complaint contends that the Respondent does not have any rights or legitimate interests in and to the disputed domain names, and that the Complainant has never provided any permissions for the Respondent to use its HELLOFRESH trademarks in the disputed domain names.
The Complaint emphasizes that the composition of the disputed domain names is likely to confuse Internet users by causing them to mistakenly believe that the disputed domain names are related to the trademarks, company name, and domain names of the Complainant. The Complainant emphasizes that its registration and use of its HELLOFRESH trademarks and domain names precedes the registration of the disputed domain name, and alleges that the disputed domain names were registered by the Respondent to attract Internet users for the purposes of commercial gain and/or fraudulent purposes.
The Complainant believes that the content of the disputed domain names indicates that the Respondent has been using the disputed domain names for phishing activities or other illicit purposes, and emphasizes that the disputed domain names have featured content that is nearly identical to the pages featured at the Complainant’s “www.hellofresh.co.uk” website. The Complaint contends that the unauthorized use of its HELLOFRESH trademarks and the disputed domain names are likely to result in damage to the Complainant’s reputation.
The Complainant is requesting that ownership of the disputed domain names be transferred from the Respondent to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panelist acknowledges that the language of the Complaint differs from the language of the registration agreement as verified by the Registrar, however the record supports proceeding in the English language in accordance with recognized UDRP practices. Notable factors outweigh delays associated with translation including (i) use of English language and Latin characters to compose the disputed domain names; (ii) evidence that the disputed domain names were used to display English language content, and (iii) the Respondent’s failure to submit a reply to the Complaint despite the Center issuing all relevant notifications in both the English and Russian languages. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.
The Panelist finds in favor of the Complainant based upon the reasons set forth below.
A. Identical or Confusingly Similar
The Complainant has presented evidence of established rights in its HELLOFRESH trademarks, and these rights precede the registration of the disputed domain names by several years.
A side-by-side comparison of the Complainant’s HELLOFRESH trademark and the disputed domain names verifies that the disputed domain names are identical or confusingly similar to the Complainant’s trademark. The TLD portions of the disputed domain names (i.e., “.website” and “.space”) are technical components that are necessary to register a domain name and do not add distinction. See WIPO Overview 3.0, section 1.11.1; see also Banana Republic (Apparel), LLC v. Chkwuka Obeleagu, Fudmart Tech Resources, WIPO Case No. D2019-1734 (disregarding the “.website” TLD component when evaluating confusing similarity) and Seiko Epson Kabushiki Kaisha v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2021-0572 (disregarding the “.space” TLD component when evaluating confusing similarity).
In this case, the disputed domain names are identical to the HELLOFRESH trademarks of the Complainant. See Ticketmaster Corporation v. DiscoverNet, Inc., WIPO Case No. D2001-00252 (noting that the TLD in the disputed domain name <ticketmaster.net> was de minimis and would not preclude confusion with the TICKETMASTER trademark).
The requirements of paragraph 4(a)(i) of the Policy have been satisfied.
B. Rights or Legitimate Interests
There is no evidence in the record to rebut the prima facie case presented by the Complainant’s allegations that the Respondent has no right or legitimate interests in and to the disputed domain name and that the Complainant has never extended any permissions to the Respondent to register the disputed domain names that have been composed using the Complainant’s HELLOFRESH trademark.
The Complaint supports shifting the burden of production to the Respondent, and the Respondent has not presented any arguments or evidence in its favor.
Furthermore, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation, and the Panel finds such risk exists in these circumstances. See WIPO Overview 3.0, section 2.5.1.
The requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
C. Registered and Used in Bad Faith
The record supports the inference that the disputed domain names were registered in bad faith. Specifically, the Complainant owns multiple registrations for its HELLOFRESH that predate registration of the disputed domain names, and each of the disputed domain names has been composed using an exact representation of the Complainant’s HELLOFRESH trademark. The record does not include any evidence that the Respondent has any rights, legitimate interests, or credible explanation for having selected the disputed domain names. See WIPO Overview 3.0, section 3.2.1.
The record includes evidence of bad faith use and the Respondent has not contested this evidence. The Complaint presents copies of pages featured at the disputed domain names that incorporate text, graphics, images, design, and links that reflect content that replicate the unique websites used by the Complainant to promote its HELLOFRESH branded goods and services. This content has included prominent use of the Complainant’s HELLOFRESH trademark to identify the webpages, and there is little doubt that consumers would mistake these displays for authentic websites published by the Complainant. The record shows that the Respondent has used the disputed domain names to target the Complainant, and such use is evidence of bad faith. WIPO Overview 3.0, section 3.2.1.
The Panelist finds that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.
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 names, <hellofresh.space> and <hellofresh.website>, be transferred to the Complainant.
Clark W. Lackert
Date: June 18, 2021