WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Flowers Foods, Inc. and Flowers Bakeries Brands, LLC v. Whois Privacy, Privacy by Design, LLC / Nathan Swartz
Case No. D2021-3504
1. The Parties
Complainants are Flowers Foods, Inc. and Flowers Bakeries Brands, LLC (collectively, “Complainant”) United States of America (“United States” or “U.S.”), represented by Kilpatrick Stockton, LLP, United States.
Respondent is Whois Privacy, Privacy by Design, LLC, United States / Nathan Swartz, United States.
2. The Domain Name and Registrar
The disputed domain name <flowersfoodscompany.com> is registered with Porkbun LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2021. On October 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 22, 2021, the Registrar transmitted by email to the Center its verification response disclosing 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 Complainant on October 26, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amended Complaint. Complainant filed an amended Complaint on October 26, 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 Respondent of the Complaint, and the proceedings commenced on October 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 17, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 18, 2021.
The Center appointed Scott R. Austin as the sole panelist in this matter on November 26, 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
Complainant Flowers Foods, Inc., and its subsidiary, Complainant Flowers Bakeries Brands, LLC, consolidated for purposes of this UDRP proceeding based on the parent - subsidiary ownership interest in and control over the trademarks at issue and collectively referred to as “Complainant”, states in its Complaint and provides evidence in the respective Annexes sufficient to support, that Complainant is one of the largest producers of packaged bakery foods in the United States and in 2020 alone had sales of USD 4.4 billion . Founded in 1919, Complainant now operates 46 bakeries that produce a wide range of bakery foods for retail and food service customers in the U.S., including a line of bakery goods, such as various buns, under the name and mark FLOWERS FOODS (the “FLOWERS FOODS Mark”) sold through popular retailers such as Sam’s Club, Costco, Instacart, IGA, Food Services Direct and Walmart.
Complainant is the owner of U.S. trademark registrations for the FLOWERS FOODS Mark, including United States Trademark Registration No. 3,181,003, FLOWERS FOODS, registered on December 5, 2006, for “bakery goods” in international class 30, and claiming a first use date of September 1, 2003; as well as trademark registrations for the FLOWERS FOODS Mark in several jurisdictions around the world, including the European Union, United Kingdom and India.
Since 2005, Complainant has provided information on Complainant and its products online under the FLOWERS FOODS Mark through its official website accessed at the URL “www.flowersfoods.com” (the “FLOWERS FOODS Official Website”) based on its registration of the domain name <flowersfoods.com> in 2000.
The disputed domain name was registered on July 7, 2021, and Respondent was using the disputed domain name to redirect Internet users to the FLOWERS FOODS Official Website at the URL “www.flowersfoods.com”, to mislead Internet users into believing that the disputed domain name is connected to Complainant’s business in furtherance of Respondent’s email scheme using the disputed domain name to pose as a key corporate officer of Complainant and send fraudulent emails on behalf of the corporate officer to request price quotes for laptop computers and other products and even to prepare and send fraudulent purchase orders impersonating individuals at Complainant in order to secure shipments of products ordered, to be shipped or delivered to various locations dictated by Respondent.
5. Parties’ Contentions
Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s trademark; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
There are no exceptional circumstances within paragraph 5(e) of the Rules to prevent this Panel from determining the present dispute based upon the Complaint (as amended), notwithstanding the failure of any person to lodge a substantive formal Response in compliance with the Rules. Under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
Where no substantive Response is filed, however, Complainant must still make out its case in all respects under paragraph 4(a) of the Policy. To succeed, Complainant must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name 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 in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel will address each of these requirements in turn.
The standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.2.
A. Identical or Confusingly Similar
Ownership of a nationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has demonstrated its rights because it has shown that it is the holder of multiple valid and subsisting trademark registrations for its FLOWERS FOODS Mark. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657.
With Complainant’s respective rights in its Marks established, the remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to Complainant’s Mark. For the disputed domain name to be found identical or confusingly similar to the FLOWERS FOODS Mark, the relevant comparison is with the second-level portion, “flowersfoodscompany” of the disputed domain name, as it is well established that the generic Top-Level Domain (“gTLD”) “.com” may generally be disregarded for this purpose. See WIPO Overview 3.0, section 1.11 (the gTLD as a technical requirement for domain name registration is disregarded under the confusing similarity test); see also, Research in Motion Limited v thamer Ahmed Alfarshooti, WIPO Case No. D2012-1146.
Prior UDRP panels have held “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; see also Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662 (the issue in the analysis of the first factor is not whether there is confusion in the trademark infringement sense (an issue more properly considered under the legitimate interest and bad faith factors), but rather whether there is sufficient similarity between the domain name and the trademark to advance to consideration of the second and third factors.).
The disputed domain name incorporates Complainant’s FLOWERS FOODS Mark in its entirety and appends the dictionary word “company” to the FLOWERS FOODS Mark, creating a strikingly similar string to Complainant’s <flowersfoods.com> domain name used to access the FLOWERS FOODS Official Website to which the disputed domain name also redirects, a factor considered further under section 6C below in determining bad faith.
Prior UDRP panels have found that adding a descriptive term to a trademark does not prevent a finding of confusing similarity between a trademark and domain name. See, National City Corp. v. MH Networks, LLC, WIPO Case No. D2004-0128; see also Philip Morris USA Inc v. Contact Privacy Inc. Customer 1242276235 / NICHAPHA PRADABRATTANA, WIPO Case No. D2018-1138 (the panel finds that the dictionary word “company”, commonly defined as “a commercial business”, does not alleviate confusing similarity between the complainant’s trademark and the disputed domain name <marlboro-company.business>).
Complainant’s FLOWERS FOODS Mark is clearly recognizable as incorporated in its entirety into the disputed domain name and for that reason the Panel finds the disputed domain name confusingly similar to the FLOWERS FOODS Mark in which Complainant has rights.
Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Under the second element of the Policy, a complainant is first required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If the complainant makes that showing, the burden of production on this element shifts to the respondent to come forward with relevant evidence of such rights or legitimate interests in the domain name. If the respondent fails to come forward with such evidence, a complainant is generally deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. See also, Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393.
Complainant has established, prima facie, that Respondent lacks rights or legitimate interests in the disputed domain name. First, prior UDRP panels have found that where a complainant’s name and mark is used in its totality in the disputed domain name, there can be no rights or legitimate use by Respondent. See Shelton J. Lee (a.k.a. Spike Lee) v. Mercedita Kyamko, WIPO Case No. D2004-0483 (“[U]sing a domain name that incorporates completely the mark of another is not legitimate use. Prima facie, it supports the conclusion that a respondent does not have a legitimate interest in the domain name.”).
Second Complainant asserts that there was never any connection, affiliation or legitimate business relationship between Complainant and Respondent giving rise to any license, permission, or other right by which Respondent could own or use any domain name incorporating or imitating the FLOWERS FOODS Mark and it has never authorized, licensed, or otherwise permitted Respondent to use the FLOWERS FOODS Mark in any manner, for the disputed domain name or otherwise.
Complainant has also claimed with persuasive evidence submitted that Respondent is not commonly known by the disputed domain name. The original Respondent was hidden by a privacy/proxy service in the Whois record submitted with the initial Complaint as “Whois Privacy, Privacy by Design, LLC”. The Registrar disclosed the underlying registrant, “Nathan Swartz”, who has been added to Complainant’s Amended Complaint to include this registrant as a co-Respondent in addition to the original Respondent. Neither Respondent bears any resemblance to the disputed domain name whatsoever. Based on these facts, combined with the lack of evidence in the record to suggest otherwise, allows this Panel to find that Respondent is not commonly known by the disputed domain name or any variation thereof pursuant to Policy paragraph 4(c)(ii).
It is generally regarded as prima facie evidence of no rights or legitimate interests if a complainant shows that the disputed domain name is identical or confusingly similar to the complainant’s trademark, that the respondent is not commonly known by the disputed domain name, and that the complainant has not authorized the respondent to use its mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise. See, Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857; see also Marriott International, Inc. v. Thomas, Burstein and Miller, WIPO Case No. D2000-0610 (no legitimate interest when there is no evidence that respondent is commonly known by the domain name).
Respondent is using the disputed domain name to redirect Internet users to the FLOWERS FOODS Official Website. Prior UDRP panels have found such limited use is insufficient to establish rights or legitimate interests. See Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records, WIPO Case No. D2017-2533 (invisible redirection to Complainant’s official website means there is “very likely no connection with a bona fide offering of goods and services.”); Bureau Veritas v. Xavier Garreu, WIPO Case No. D2017-1570 (disputed domain name redirecting to Complainant’s official website without authorization likely to mislead Internet users into believing disputed domain name is connected to Complainant’s business found not a bona fide offering of goods and services).
Most importantly, Complainant’s evidence shows Respondent has used, and is using, the disputed domain name as part of a fraudulent scheme to trick suppliers of Complainant or other companies into fulfilling fraudulent orders for products for the financial benefit of Respondent which Complainant contends is neither use in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name.
Prior UDRP panels have held in the presence of evidence similar to that submitted here that intentional infringement to trade on the fame of another cannot constitute a bona fide offering of goods and services as to conclude otherwise is obviously contrary to the intent of the Policy. See, Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com, WIPO Case No. D2000-0847); see also, WIPO Overview 3.0, section 2.13.
These facts establish Complainant’s prima facie showing. Respondent has not provided any basis on which that showing may be overcome. In addition, the Panel notes that the composition of the disputed domain name carries a risk of implied affiliation with Complainant. WIPO Overview 3.0, section 2.5.1.
The Panel finds, therefore, that Complainant has successfully met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that point to bad faith conduct on the part of a respondent:
(i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location.
The Panel finds that given the facts and purposes for which the disputed domain name has been used here, the renown and longstanding use by Complainant of the FLOWERS FOODS Mark, Respondent has registered the disputed domain name in bad faith because it incorporates in its entirety Complainant’s FLOWERS FOODS Mark, showing Respondent’s actual knowledge of Complainant’s intellectual property rights at the time of registration of the disputed domain name, and targeting of Complainant for purposes of perpetrating a fraud upon suppliers of Complainant or other companies. See WIPO Overview 3.0 at section 3.4.
Complainant also shows Respondent is using the disputed domain name in bad faith by redirecting it to Complainant’s Flowers Foods Official Website at “www.flowersfoods.com”.
Prior UDRP panels have held such redirecting use as evidence of bad faith registration and use of a disputed domain name because so long as a respondent owns the domain name, it can re-direct it to any website of its choosing, and that abusive threat is left hanging over the head of a complainant. See Securitas AB v. Advocaat Peter, WIPO Case No. D2020-2126; see also WIPO Overview 3.0 at section 3.1.4.
The Panel further finds that Respondent’s registration of the disputed domain name with awareness of Complainant and the FLOWERS FOODS Mark, and with the absence of its own rights or legitimate interests, amounts to registration in bad faith by Respondent. See Royds Withy King LLP v. Help Tobuy, WIPO Case No. D2019-0624.
Finally, the Panel finds bad faith use of the disputed domain name by Respondent to pass itself off as Complainant and by impersonating a key officer within Complainant’s company, perpetrate a fraudulent scheme to trick suppliers of Complainant or other companies into fulfilling fraudulent orders for products for the financial benefit of Respondent.Respondent has registered a domain name confusingly similar to Complainant’s FLOWERS FOODS Mark, in order to capitalize on the hard-earned and valuable goodwill associated with Complainant’s mark in furtherance of a fraudulent scheme for Respondent’s commercial gain. See Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; see also Artemis Mtkg. Corp. v. ICS INC. / Online Resource, Online Resource Mgmt. Ltd. / VMI INC, WIPO Case No. D2019-0141.
The Panel finds Complainant’s arguments and evidence persuasive and has received no arguments or evidence from Respondent to the contrary. Considering all the circumstances, the Panel concludes that Respondent has registered and used the disputed domain name in bad faith and Complainant has satisfied paragraph 4(a)(iii) 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 disputed domain name <flowersfoodscompany.com> be transferred to Complainant.
Scott R. Austin
Date: December 20, 2021