WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wm Morrison Supermarkets PLC v. Morrisons Fresh Ltd.
Case No. D2019-0645
1. The Parties
The Complainant is Wm Morrison Supermarkets PLC of Bradford, United Kingdom (“UK”), represented by DWF Law LLP, UK.
The Respondent is Morrisons Fresh Ltd. of Edinburgh, UK, internally-represented.
2. The Domain Name and Registrar
The disputed domain name <morrisonsfresh.com> 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 March 22, 2019. On March 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 26, 2019, 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 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 2, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 22, 2019. The Response was filed with the Center on April 21, 2019.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on April 29, 2019. 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
According to the Complainant, it operates a major supermarket chain in the UK with nearly 500 stores, and also trades in wholesale supplies. Commonly it is known as Morrisons and has traded under that form of its name since 1961. The scale of the company is that it employs over 110,000 people and has annual revenue of around GBP 17 billion.
The Complainant holds a number of trademarks including:
MORRISONS, UK Intellectual Property Office, filed July 4, 1997, registered May 12, 2000, registration number 2137961, classes 1, 2, 3, 4, 5, 6, 8, 9, 11, 12, 13, 14, 16, 17, 18, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 37, 41, 42;
MORRISONS, European Union trademark, filed January 19, 2000, registered October 16, 2002, registration number 1466713, classes 35, 36, 39, 42;
MORRISONS, European Union trademark, filed September 23, 2010, registered March 6, 2011, registration number 9397704, classes 1, 2, 3, 4, 5, 6, 8, 9, 11, 12, 13, 14, 16, 17, 18, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 37, 38, 41, 42, 43, 44.According to the Respondent, it is a UK company dealing in fruit and vegetables wholesale, registered on December 29, 2017.
The Respondent’s company name is the subject of a complaint by the Complainant currently before the Company Names Tribunal.
The disputed domain name was registered on December 20, 2017. It resolves to a website displaying pictures of fruit and vegetables, with references to a number of services associated with the importation and distribution of produce.
5. Parties’ Contentions
The Complainant contends that the disputed domain name <morrisonsfresh.com> incorporates the entirety of the Complainant’s trademark MORRISONS and is therefore confusingly similar. Furthermore the word “fresh” in the disputed domain name is commonly associated with fruit and vegetables such as the Complainant’s products.
The Complainant says the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has no relationship with the Respondent, which has not been authorised to use the Complainant’s trademark.
The Complainant says the Respondent’s website, under the name Morrisons Fresh Ltd., purports to offer fruit and vegetables wholesale, but the Complainant does not believe there is a legitimate offering of goods or services. Emails from the Respondent to suppliers, that have come into the hands of the Complainant, enquiring about the purchase of limes, refer to quantities that according to a trade source cannot be realistic. A private investigator retained by the Complainant tried to place orders by email or telephone with the Respondent, which did not reply. The Complainant alleges that the Respondent’s use of the disputed domain name is fraudulent. A complaint has been made to the City of London Police Intellectual Property Unit and the Respondent’s company name is the subject of a complaint currently before the Company Names Tribunal.
The Complainant sent a letter dated March 20, 2018, to the Respondent, demanding a number of undertakings by the Respondent including the transfer of the disputed domain name, to which the Respondent replied stating why it declined to accede to the Complainant’s requests.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith, with intent to attract Internet users by confusion with the Complainant for commercial gain.
The Complainant requests the transfer of the disputed domain name.
The Respondent denies the Complaint.
The Respondent says there are over 120 companies in the UK whose names contain the element “Morrisons”. Since the Respondent’s registered name is Morrisons Fresh Ltd, the disputed domain name is its logical choice and it does not refer to the Complainant.
The Respondent denies it is without rights or legitimate interests in respect of the disputed domain name. The Respondent has such rights because the disputed domain name is effectively identical to its name as officially registered at Companies House. The Respondent’s business is registered under only wholesale fresh fruits and vegetables, whereas the Complainant, according to Companies House, is in the business of retail sales of all products.
The Respondent says it has posted a disclaimer on its website to the effect that it is not a subsidiary of any other UK or European Union company.
The Respondent refutes the Complainant’s allegations of fraud. It has produced a sample of the import entry acceptance documentation for a lime importation as evidence of a bona fide offering of goods. The initial email from the Respondent enquiring about limes, which was shown to the Complainant, made no reference to the Complainant and is a normal business email. The Respondent says it has received several emails from suppliers in praise of on-going business relations.
The Respondent further denies that the disputed domain name has been registered and is being used in bad faith. It reflects the Respondent’s approved trading name. There is no evidence of the disputed domain name having caused any confusion with the Complainant. The Respondent refers to the email that it apparently sent to a trader in Guatemala, who forwarded it to the Complainant with comments to the effect that it could not be a genuine enquiry about the purchase of limes. The Respondent denies the email could have caused confusion between the Respondent and the Complainant. The Complainant’s objective is to gain control of the disputed domain name and to force the Respondent to change its name.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
The Panel has inspected the trademark registration evidence produced by the Complainant and is satisfied that the Complainant has rights in the trademark MORRISONS under paragraph 4(a)(i) of the Policy.
The disputed domain name <morrisonsfresh.com> features prominently the entirety of the Complainant’s trademark and to that extent satisfies the modest requirement for a finding of confusing similarity under paragraph 4(a)(i) of the Policy. The additional term “fresh” is found not to detract from confusing similarity in the context, and the generic Top-Level Domain (“gTLD”) “.com” need not be taken into consideration.
Accordingly the Panel finds for the Complainant under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has asserted prima facie that it has no relationship with the Respondent, which has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent avers that it has rights and legitimate interests in the disputed domain name because it is engaged in a bona fide offering of goods and services in the terms of paragraph 4(c)(i) of the Policy. In support of this position the Respondent has produced a Companies House Certificate of Incorporation of the Private Limited Company Morrisons Fresh Ltd., dated December 29, 2017, stating its business as “wholesale of fruit and vegetables”, and has produced an abstract of the website to which the disputed domain name resolves. It has also produced a quarantine release certificate and redacted clearance paperwork in its name with dates in December 2018 in respect of a shipment of some 23,760 kg of limes imported by sea from Brazil.
On the other hand, the Complainant says it has reason to believe the Respondent’s business is not legitimate and that it has identified certain anomalies. The Complainant has come into possession of an email apparently sent by the Respondent to at least two exporters as an expression of interest, in the following terms:
We’d be interested in loading Limes sizes 42/48/54
Our loading program during the entire season will be: 2*40FCL of Limes weekly. Please provide us with the prices CIF Felixstowe/Southampton with photos for the recent shipments.
- 100% coloration for the Limes
- Soft Skin without burses and scars
- Packing in 10lb cartons
Looking forward to receiving your respond.
[Respondent’s contact details]”
(40FCL is assumed to mean 40-foot container load, and CIF to mean cost, insurance and freight paid by the seller.)
One of the above emails was received by a supplier in Guatemala and forwarded to the Complainant by a trade contact. The trade contact, in an email, expressed an opinion about the Respondent, since it has “a name so close to yours” (i.e., the Complainant’s), that, “I really think that they are trying to defraud growers”. The contact also said, “The lime industry is relatively small - and there is no way that there is a company that could take 2 containers (or even 1) on a weekly basis that I have not heard of”. The contact says it had tried to telephone the Respondent, but there was no answer.
The Complainant also arranged for investigations. A private investigator tried to place orders for food with the Respondent by email and telephone, but received no reply.
To the Panel, there are incongruities in the Respondent’s projection of its business. The Respondent describes itself on its website in such terms as “A formidable fresh produce partner for retailers and growers alike. Broad product range, a global network, huge operational capacity and business process excellence make for an unrivalled commercial proposition”.
For a company portraying itself on such an expansive scale, its website projects a lack of professionalism. The heading has dark lettering on a dark background and is difficult to read. Some clickable page headings with corresponding pictures do not lead anywhere useful. “Grapes” and “Berries” merely show the same pictures as in the compendium beneath, “Citrus” also curiously brings up pictures of apples, pineapples, capsicums and onions, whereas the “Stone Fruits”, “Tropical Fruits”, “Onions & Garlic” and “Vegetables” headings are inactive. The website appears incomplete.
The Respondent’s email message seeking limes also lacks something in professionalism. “Burses” are perhaps “bruises”, and “your respond” is presumably “your response”.
Nevertheless, in terms of the requirement under paragraph 4(c)(i) of the Policy to demonstrate use of the disputed domain name in connection with a bona fide offering of goods or services, the Respondent has produced what appears to be an authentic four-page set of documents in respect of an importation through the port of Felixstowe of 23,760 kg of limes, Citrus latifolia, with a value of GBP 26,716 including VAT. Although more instances would have been preferred, the amount and value are not insubstantial. The import entry and quarantine release documentation, presumably picked to address the mention of limes in the Complaint, appears to fulfil, on balance, the definition of “in connection with a bona fide offering of goods or services” for the purposes of the Policy.
In weighing the Respondent’s claim of a bona fide business and matching (disputed) domain name under its registered company name, against the Complainant’s assertion that it may not be a genuine business, the Panel can look at only the evidence presented at this stage. The more serious an allegation against the Respondent, the stronger the evidence must be. The allegation against the Respondent of potential for fraud is based on suspicion and opinion from an undisclosed business contact to the effect that the order would be disproportionate, an opinion unsupported with any factual data, metrics, statistics or other hard evidence, and unsupported by any background or claim by the business contact to be in a position to present qualified evidence. There is no actual evidence of the Respondent having done anything untoward.
The Respondent has an evidently common business name, being incorporated in various forms about 120 times (some of which may belong to the Complainant) in the UK alone, and has reflected that name in the disputed domain name. The company records appear to have been maintained diligently at Companies House. The Panel cannot ignore the present acceptance by Companies House of the Respondent’s company name in its declared area of business. The Complainant’s objection before the Company Names Tribunal is at this stage an allegation that the Panel is in no position to second-guess.
Whilst the provisions of paragraph 4(c) of the Policy are for the guidance of especially the Respondent (and are without limitation), it remains ultimately for the Complainant to prove its case. A number of disparities appear in the Respondent’s conduct of its business. Its failure to reply to ostensible business approaches by telephone or email is strange. The Respondent did, however, reply to the cease and desist letter of April 18, 2018, stating its position, and did respond to the Complaint. The Respondent is not unreachable.
Suspicions are not enough. On the available evidence, and on balance, the Panel is unable to find that the Complainant has gone so far as to prove that the Respondent is without rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy.
The second element having not been established by the Complainant, it is not essential to proceed to the question of registration and use in bad faith, but the Panel will do so briefly.
C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
No evidence has been produced to the effect that the disputed domain name has been offered for sale, or that the Respondent has engaged in a pattern of making blocking registrations, or of any intention to disrupt the business of a competitor. There is no specific evidence of a risk of the Respondent’s and the Complainant’s clients being confused over each other. On the evidence and submissions presented, there is not sufficient for the Panel to find registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
D. Refiling of Complaint
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), at section 4.18, headed “Under what circumstances would a refiled case be accepted?”, reads in part as follows: “In certain highly limited circumstances (such as where a panel found the evidence in a case to be finely balanced, and opined that it may be possible for future respondent behavior to cast a different light on a panel’s assessment of bad faith), a panel may record in its decision that in the event certain conditions would be met, acceptance of a refiled complaint may be justified.”
The Panel expressly notes that the present case is one in which future events, including but not limited to the outcome of the Complainant’s pending complaint before the Company Names Tribunal, new evidence not presently available, or future conflict between the Respondent and the Complainant, may provide justification for the submission of a refiled Complaint.
For the foregoing reasons, the Complaint is denied.
Dr. Clive N.A. Trotman
Date: May 11, 2019