WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Flowers Foods, Inc. and Flowers Bakeries Brands, LLC v. Withheld for Privacy, Privacy service provided by Withheld for Privacy ehf / Name Redacted
Case No. D2021-2276
1. The Parties
The Complainant is Flowers Foods, Inc., United States of America (“United States”) and Flowers Bakeries Brands, LLC, United States (hereinafter “the Complainants”), represented by Kilpatrick Townsend & Stockton LLP, United States.
The Respondent is Withheld for Privacy, Privacy service provided by Withheld for Privacy ehf, Iceland / Name Redacted1 .
2. The Domain Name and Registrar
The disputed domain name <flowersfoodsinc.com> (the “Disputed 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 July 13, 2021. On July 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 14, 2021, the Registrar transmitted by email to the Center its verification response registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 27, 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 amended Complaint on July 28, 2021.
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 the Respondent of the Complaint, and the proceedings commenced on August 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 30, 2021.
The Center appointed Lynda M. Braun as the sole panelist in this matter on September 10, 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
Founded in 1919, the Complainants, are large producers of packaged bakery foods in the United States. The Complainants operate 46 bakeries that produce a wide range of bakery goods, including breads, buns, rolls, snack cakes, and tortillas, for retail and food service customers in the United States. The Complainants sell their products under a number of leading brands such as “Nature’s Own”, Dave’s Killer Bread”, “Canyon Bakehouse”, “Tastykake”, and “Wonder”. In addition, the Complainants offer bakery goods under the name and trademark FLOWERS FOODS, which are offered for sale through retailers such as Sam’s Club, Costco, Instacart, IGA, Food Services Direct, and Walmart.
The Complainants own registered trademarks for FLOWERS FOODS, as set forth below:
FLOWERS FOODS (word mark), United States Trademark Registration No. 3181003, registered on December 5, 2006 in international class 30;
FLOWERS FOODS (word and design mark), United States Trademark Registration No. 3181002, registered on December 5, 2006 in international class 30; and
FLOWERS FOODS, European Union Trademark Registration No. 011172475, registered on January 16, 2013 in international class 30.
The Complainants also own registrations for FLOWERS FOODS in several other jurisdictions worldwide, including the United Kingdom and India. The aforementioned trademarks are hereinafter collectively referred to as the “FLOWERS FOODS Mark”.
The Complainants also own the domain name <flowersfoods.com> which they registered in 2000 and which has resolved to their official website at “www.flowersfoods.com” since 2005, and which they use to provide information about the company and their products. The Complainants also use their FLOWERS FOODS Mark on social media platforms such as LinkedIn and Twitter.
The Respondent registered the Disputed Domain Name on October 28, 2020, a date well after the Complainants registered and used the FLOWERS FOODS Mark. Since registering the Disputed Domain Name, the Respondent has used it as part of a phishing scheme to defraud unsuspecting suppliers of the Complainants by sending emails posing as the Complainants’ Chief Operating Officer. The fraudulent emails sent by the Respondent request price quotes for a variety of products, and then place fraudulent orders for such products on behalf of the Complainants to be shipped or delivered to various locations assigned by the Respondent. Moreover, the Respondent has prepared and filed fraudulent new account applications, credit applications and other documents impersonating the Complainants in order to secure shipments of products. In furtherance of the Respondent’s fraudulent scheme, the Respondent has also used the Disputed Domain Name as a redirect to the Complainants’ website to pass off as the Complainants and to reinforce the idea that the emails and orders from the Respondent are legitimate.
5. Parties’ Contentions
The following are the Complainants’ contentions:
- the consolidation of the Complainants against the Respondent is appropriate, fair and equitable as the Complainants are parent and subsidiary companies under common control, and have common interests;
- the Disputed Domain Name is confusingly similar to the Complainants’ trademark;
- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
- the Disputed Domain Name was registered and is being used in bad faith; and
- the Complainants seek the transfer of the Disputed Domain Name from the Respondent to the Complainants in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
6.1 Procedural Issues: Consolidation of Multiple Complainants
Pursuant to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11, the consolidation of multiple complainants filing a joint complaint against one or more respondents is subject to the discretion of the appointed panel.
In assessing whether a complaint filed by multiple complainants may be brought against one or more respondents, the appointed panel should consider whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation.
Keeping this in mind, the Panel notes that the Complainants in the present administrative proceeding are parent and subsidiary companies. Additionally, their Complaint is based on the same set of facts. As noted in greater detail below, the Respondent appears to have engaged in conduct targeting both Complainants. As such, the Complainants have a specific common grievance against the Respondent. The Panel is not aware of any circumstances that would create prejudice to the Respondent by allowing the Complaint filed by the Complainants to proceed.
Therefore, the Panel considers that it is fair and equitable under the circumstances of the case to permit the consolidation, as the Complainants are not only affiliated companies as parent and subsidiary, but also have a specific common grievance against the Respondent.
Consequently, the Panel allows the Complainants to proceed jointly with their Complaint.
6.2. Substantive Issues
In order for the Complainants to prevail and have the Disputed Domain Name transferred to the Complainants, the Complainants must prove the following (Policy, paragraph 4(a)):
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
This element consists of two parts: first, do the Complainants have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the Complainants’ FLOWERS FOODS Mark.
It is uncontroverted that the Complainants have established rights in the FLOWERS FOODS Mark based on their years of use as well as their registered trademarks for the FLOWERS FOODS Mark in the United States, the European Union, the United Kingdom, and India. The general consensus is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot, WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainants have rights in the FLOWERS FOODS Mark.
The Disputed Domain Name <flowersfoodsinc.com> consists of the FLOWERS FOODS Mark in its entirety, followed by the term “inc” (the abbreviation for the dictionary term “incorporated”), and then followed by the generic Top-Level Domain (“gTLD”) “.com”. Where the trademark is recognizable in the Disputed Domain Name, the addition of other terms, such as “inc”, does not prevent a finding of confusing similarity. See WIPO Overview 3.0, section 1.8 (“where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”); see Applied Materials Inc. v. Contact Privacy Inc. Customer 0152257585 / Name Redacted, WIPO Case No. D2019-1116 (“The term ‘inc’ refers to a form of corporate entity commonly used in business. Addition of that term to Complainant’s trademark in the disputed domain name does not prevent a finding of confusing similarity between Complainant’s trademark and the disputed domain name.”). Further, numerous UDRP decisions have reiterated that the addition of a dictionary term to a trademark – or an abbreviation thereof – does not prevent a finding of confusing similarity. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795; Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923.
Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182 and WIPO Overview 3.0, section 1.11. Thus, the Panel concludes that the Disputed Domain Name is confusingly similar to the Complainants’ FLOWERS FOODS Mark.
Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy has been met by the Complainants.
B. Rights or Legitimate Interests
Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.
There is no evidence in the record suggesting that the Respondent has rights or legitimate interests in the Disputed Domain Name. The Complainants have not authorized, licensed, or otherwise permitted the Respondent to use the Complainants’ FLOWERS FOODS Mark. The Complainants do not have any business relationship with the Respondent, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name. There is also no evidence that the Respondent is commonly known by the Disputed Domain Name or by any name similar to it.
Further, the Respondent, by configuring emails using the Disputed Domain Name, attempts to pass off as the Complainants and perpetuate a fraudulent phishing scheme, which conduct does not confer rights or legitimate interests on the Respondent. See WIPO Overview 3.0, section 2.13.1 (“Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.”). The Respondent also uses the Disputed Domain Name to pass off as the Complainants and resolve to the Complainants’ official website to further deceive the Complainants’ suppliers. Thus, the Panel concludes that nothing on the record before it would support a finding that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name.
Finally, the composition of the Disputed Domain Name, comprising the entirety of the FLOWERS FOODS Mark, carries a risk of implied affiliation and cannot constitute fair use here, as it suggests sponsorship or endorsement by the Complainants. See WIPO Overview 3.0, section 2.5.1.
Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainants.
C. Registered and Used in Bad Faith
The Panel finds that based on the record, the Complainants have demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.
First, the Respondent is using the Disputed Domain Name to impersonate the Complainants and perpetrate a fraudulent phishing scheme directed at the Complainants’ unknowing suppliers, which is clear evidence of bad faith. The Respondent’s phishing scheme to impersonate the Complainants’ Chief Executive Officer and send fraudulent emails to the Complainants’ suppliers evidences a clear intent to disrupt the Complainants’ business, deceive individuals, and trade off the Complainants’ goodwill by creating an unauthorized association between the Respondent and the Complainants’ FLOWERS FOODS Mark. See Banco Bradesco S.A. v. Fernando Camacho Bohm, WIPO Case No. D2010-1552. Previous UDRP panels have found that email-based phishing schemes that use a complainant’s trademark in the domain name are evidence of bad faith. See WIPO Overview 3.0, section 3.4 (“Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. […] Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers.”).
Second, based on the circumstances here, the Panel concludes that the Respondent registered and is using the Disputed Domain Name in bad faith in an attempt to attract unsuspecting Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainants’ FLOWERS FOODS Mark as to the source, sponsorship, affiliation or endorsement of the Disputed Domain Name. The Respondent’s registration and use of the Disputed Domain Name indicate that such registration and use has been done for the specific purpose of trading on the name and reputation of the Complainants and their FLOWERS FOODS Mark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain”).
Third, the registration of a domain name that reproduces a widely-known trademark in its entirety (being identical or confusingly similar to such trademark) by an individual or entity that has no relationship to that mark, without any reasonable explanation on the motives for the registration, may be suggestive of opportunistic bad faith. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.
Finally, the Panel concludes that the Respondent had knowledge of the Complainants’ trademark rights and a bad faith intent to register and use the Disputed Domain Name. By using the Disputed Domain Name to configure the Disputed Domain Name as emails emanating from the Complainants, it is highly likely that the Respondent had actual knowledge of the Complainants, their business, and their FLOWERS FOODS Mark when creating the Disputed Domain Name. As the Complainants have promoted and sold their bakery goods using the FLOWERS FOODS Mark well before the Respondent’s registration of the Disputed Domain Name, there is no doubt that the Respondent was aware of the Complainants and their FLOWERS FOODS Mark and was thus intentionally capitalizing on potential confusion. In light of the circumstances of this case, it is not possible to conceive of a plausible situation in which the Respondent would have been unaware of the Complainants’ FLOWERS FOODS Mark at the time the Respondent registered the Disputed Domain Name, demonstrating the Respondent’s bad faith.
Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has been met by the Complainants.
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 Name <flowersfoodsinc.com> be transferred to the Complainants.
Lynda M. Braun
Date: September 24, 2021
1 The Respondent appears to have used the name of the Complainants’ President and Chief Executive Officer when registering the Disputed Domain Name. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST 12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.