WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Weetabix Limited v. Domain Privacy, Above.com Domain Privacy

Case No. D2021-1311

1. The Parties

The Complainant is Weetabix Limited, United Kingdom, represented by Gowling (UK) LLP, United Kingdom.

The Respondent is Domain Privacy, Above.com Domain Privacy, Australia.

2. The Domain Name and Registrar

The disputed domain name, <winwithweetabixotg.com> (the “Domain Name”), 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 April 28, 2021. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. Also on April 28, 2021, the Registrar transmitted by email to the Center its verification response, which disclosed registrant and contact information for the Domain Name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 29, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 29, 2021.

The Center verified that the Complaint, together with the amendment to the Complaint (collectively, 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 May 5, 2021. In accordance with the Rules, paragraph 5, the due date for the Response was May 25, 2021. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on May 27, 2021.

The Center appointed D. Brian King as the sole panelist in this matter on June 6, 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

A. The Parties

The Complainant is Weetabix Ltd., a cereal and cereal bar manufacturer based in Northamptonshire, United Kingdom. The Complainant has marketed products under the WEETABIX brand name since 1932, and it has been trading internationally under that brand name for more than 50 years. According to the Complainant, Weetabix employs over 2,000 people and exports its products to more than 80 countries.

The Respondent has not provided the Panel with any information on its history or activities.

B. The Mark

The Complainant owns 159 trademarks for WEETABIX in jurisdictions around the world. The Complainant has also registered the WEETABIX ON THE GO mark, which it uses in connection with its brand of cereal drinks, in several jurisdictions. An illustrative, non-exhaustive list of these registered trademarks follows (Annex 4 to the Complaint):

The Complainant also owns numerous domain names incorporating the WEETABIX mark, which it uses in connection with its business. These include <weetabix.co.uk>, <weetabixusa.com>, and <weetabix.it> (Annex 5 to the Complaint).

C. The Domain Name

The Domain Name was registered on March 4, 2021 (Annex 1 to the Complaint). It resolved to a website (the “Website”) featuring pay-per-click (“PPC”) links directing to pages that sell cereal products similar to the Complainant’s offerings (Annex 6 to the Complaint).

5. Parties’ Contentions

A. Complainant

The Complainant first argues that the Domain Name is confusingly similar to its registered WEETABIX and WEETABIX ON THE GO trademarks (together, the “WEETABIX Marks”). The Complainant begins by asserting that its brand is recognized worldwide due to the company’s long history and the global reach of its products, noting that it holds numerous trademark registrations for and domain names using the WEETABIX Marks. The Complainant proceeds to argue that the Domain Name is confusingly similar to its registered trademarks: the Domain Name entirely incorporates the WEETABIX mark, and the addition of the letters “OTG” can easily be read as a shortened version of the Complainant’s WEETABIX ON THE GO trademark. The wording “win” and “with” does nothing to diminish the confusing similarity, the Complainant argues, but rather enhances the impression that the Website is affiliated with the Complainant. Finally, the Complainant notes that the Website has been used to sell goods similar to those the Complainant markets under its WEETABIX Marks, furthering the likelihood of confusion on the part of Internet users.

The Complainant next argues that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent is not commonly known by a name corresponding to the WEETABIX mark – which in itself is a term lacking any inherent meaning, except insofar as it denotes the Complainant’s brand. Furthermore, the Complainant represents that it has not authorized the Respondent to use the WEETABIX Marks in any way.

Finally, the Complainant argues that the Domain Name was registered and is being used in bad faith. The Complainant contends that it is impossible that the Respondent could have been unaware of the Complainant’s rights in the WEETABIX Marks when it registered the Domain Name, given that (i) those marks are famous globally, and (ii) the word “Weetabix” is associated only with the Complainant’s brand. The Complainant goes on to assert that the Respondent is using the confusing similarity between the Domain Name and the WEETABIX Marks to attract Internet users to its Website for commercial gain. Furthermore, the Complainant says, the confusing similarity of the Domain Name to the Complainant’s marks may lead Internet users to attribute actions taken by the Respondent to the Complainant, which could damage the company’s reputation.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy stipulates that the Complainant must prove the following three elements in order to be successful in its action:

(i) the Domain Name is identical or confusingly similar to trademarks or service marks in which the Complainant has rights;

(ii) the 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.

Paragraph 4(c) of the Policy sets out illustrative circumstances that could demonstrate a respondent’s rights or legitimate interests in a domain name for purposes of paragraph 4(a)(ii) above.

Paragraph 4(b) of the Policy sets out illustrative circumstances that may demonstrate registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) above.

A. Identical or Confusingly Similar

The Domain Name entirely incorporates the Complainant’s WEETABIX mark, appending the phrase “win with”, the letters “otg”, and the generic Top-Level Domain (“gTLD”) “.com”. It is well established that the addition of the gTLD does not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.8 and 1.11. The Panel finds that the addition of the phrase “win with” (represented in the Domain Name without the separating space) likewise does not prevent a finding of confusing similarity of the Domain Name to the WEETABIX mark. Finally, the Panel agrees with the Complainant that the letters “otg” appended to the Complainant’s WEETABIX mark could reasonably be read as a truncated form of the Complainant’s WEETABIX ON THE GO mark, thereby supporting the impression that the Domain Name is associated with the Complainant. Even if not so read, the addition of the otherwise meaningless letters “otg” would not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview 3.0. Accordingly, the Panel has no difficulty in concluding that the Domain Name is confusingly similar to the Complainant’s WEETABIX Marks.

The Panel accordingly finds that the Complainant succeeds as to the first element under the Policy.

B. Rights or Legitimate Interests

Many prior UDRP panels have found that a complainant only needs to establish a prima facie case in relation to the second element of the test under paragraph 4(a)(ii) of the Policy (see, e.g., Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; MatchNet plc v. MAC Trading, WIPO Case No. D2000-0205). Once a prima facie showing is made, the burden of production shifts to the Respondent to demonstrate that it possesses rights or legitimate interests in respect of the disputed domain name.

The present Panel agrees that the Complainant need only make out a prima facie case and finds that it has met that standard here. In the absence of any contrary evidence, the Panel accepts the Complainant’s representation that the Respondent has no connection to the Complainant and has not received permission to use the Complainant’s WEETABIX Marks. The Panel also finds no indication that the Respondent is commonly known by a name corresponding to the Domain Name.

In these circumstances, the Complainant has made out a prima facie case that the Respondent lacks any rights or legitimate interests in the Domain Name. The Respondent has failed to provide any contrary evidence, despite having had the opportunity to do so. The Panel accordingly finds that the Complainant succeeds as to the second element of the test under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The third element of the test under paragraph 4(a) requires proof that the Domain Name has been registered and is being used in bad faith. The Panel finds that to be sufficiently established here.

The Panel has already found above that the Domain Name is confusingly similar to at least the Complainant’s WEETABIX mark. The Panel accepts the Complainant’s contention that it is difficult to imagine that the Respondent was unaware of the Complainant’s rights in the mark when registering the Domain Name, in particular because the WEETABIX brand is widely recognized, indeed iconic, globally. Furthermore, the record shows that the Domain Name resolves to a parked page featuring PPC links capitalizing on the Complainant’s mark (Annex 6 to the Complaint). In these circumstances, the Panel finds that the Respondent has attempted to attract Internet users to its Website for commercial gain by creating a likelihood of confusion with the Complainant’s marks, which constitutes bad faith registration and use under the Policy (See WIPO Overview 3.0, section 3.1). The Complainant therefore succeeds on the third element of the paragraph 4(a) test as well.

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, <winwithweetabixotg.com>, be transferred to the Complainant.

D. Brian King
Sole Panelist
Date: June 18, 2021