Flowers Foods, Inc. and Flowers Bakeries Brands, LLC v. [John Doe as Holder of Domain Name <flowersfoodsinc.us>]
Claim Number: FA2110001970340
Complainant is Flowers Foods, Inc. and Flowers Bakeries Brands, LLC (“Complainant”), represented by Georges Nahitchevansky of Kilpatrick Townsend & Stockton LLP, New York, USA. Respondent is [John Doe as Holder of Domain Name <flowersfoodsinc.us>] (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <flowersfoodsinc.us>, registered with NameCheap, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his or her knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 24, 2021; the Forum received payment on October 24, 2021.
On October 25, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <flowersfoodsinc.us> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On October 27, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 16, 2021, by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to the attention of postmaster@flowersfoodsinc.us. Also, on October 27, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 22,2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
relATED Issue: Identity Theft
Complainant asserts in its Complaint that the name which would ordinarily be shown in the caption of this Decision as taken from the WHOIS information for the disputed domain name is that of Complainant’s President and CEO. Complainant therefore requests that that name be redacted from this Decision because it is an attempt at identity theft, which purloined name Respondent has used to facilitate its fraudulent enterprise to the detriment of the public reputation of the named individual.
In weighing this request, which is unopposed, we take cognizance of Policy ¶ 4(j), which provides that: “[a]ll decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision.” In Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellzfargo.com>, FA 362108 (Forum December 30, 2004) and Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellsfargossl>, FA 453727 (Forum May 19, 2005), panels, acting under the authority of Policy ¶ 4(j), omitted from their decisions named respondents’ identifying information, in order to protect those named respondents from the consequences of identity theft. In consideration of the reasoning in those decisions, which we adopt, the name of the domain name registrant recited in the pertinent WHOIS information is not included in either the caption or the body of this Decision. Instead, we have substituted “[John Doe as Holder of Domain Name <flowersfoodsinc.us>]” throughout.
Preliminary Issue: Multiple Complainants
Paragraph 3.a. of the Forum’s Rules for the usTLD Dispute Resolution Policy provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint….” Paragraph 1.e. of the Forum’s Supplemental Rules for the usTLD Dispute Resolution Policy defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as the “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
In the instant proceedings, there are two identified Complainants: “FLOWERS FOODS, INC.” and “FLOWERS BAKERIES BRANDS, LLC.” Public records reveal that Flowers Bakeries Brands, LLC is a subsidiary of Flowers Foods, Inc., registrant of the FLOWERS FOODS trademark, and together they hold all right, title and interest in that mark.
It is well established that multiple parties may proceed as one party in a proceeding under the Policy where they can show a sufficient link to one another. See, for example, Vancouver Org. Comm. for the 2010 Olympic and Paralympic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel there finding that:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
See also Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum December 28, 2003), in which a panel treated two complainants as a single entity where both held rights in trademarks contained within disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum February 6, 2004), a panel found a sufficient link between multiple complainants where there was a license between them regarding use of a mark at issue in the proceeding.
There being no objection from Respondent, on the facts before us the allegations of the Complaint are deemed sufficient to establish a sufficient nexus between the two identified enterprises justifying that they be permitted to proceed as a single complainant for all purposes in this proceeding. Accordingly, throughout the remainder of this proceeding, the two will be referred to collectively as “Complainant.”
A. Complainant
Complainant is one of the largest marketers of packaged bakery foods in the United States, with 46 bakeries producing breads, buns, rolls, snack cakes, and tortillas for retail and food service customers under a number of leading brand names, and with annual sales of $4.4 billion USD.
Complainant holds a registration for the FLOWERS FOODS trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 3,181,003, registered December 5, 2006, and renewed as of December 24, 2016.
Respondent registered the domain name <flowersfoodsinc.us> on or about July 27, 2021.
The domain name is confusingly similar to Complainant’s FLOWERS FOODS trademark.
Respondent has not been commonly known by the domain name.
Complainant has not licensed or otherwise permitted Respondent to use the FLOWERS FOODS mark.
Respondent does not use the domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent profits from the confusion thus caused among Internet users.
Respondent lacks both rights to and legitimate interests in the domain name.
Respondent used a privacy service to shield its identity when registering the domain name.
Respondent knew of Complainant and its rights in the FLOWERS FOODS trademark when it registered the domain name.
Respondent both registered and now uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent 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 domain name; and
iii. the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [...] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the FLOWERS FOODS trademark sufficient for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See, for example, Synovus Financial Corp. v. Elizabeth Fagin / Wells & Wadw, FA 1655021 (Forum February 5, 2016) (finding that a complainant had demonstrated its rights in a mark through its registration of the mark with the USPTO).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <flowersfoodsinc.us> domain name is confusingly similar to Complainant’s FLOWERS FOODS trademark. The domain name incorporates the mark in its entirety, with only the addition of the term “inc,” an abbreviation for “incorporated,” a reference to the form of Complainant’s business organization, plus the country code Top Level Domain (“ccTLD”) “.us.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Discovery, Inc. v. Domain Admin / E-Promote, FA 1892784 (Forum May 19, 2020):
The Disputed Domain Name is confusingly similar to the DISCOVERY Mark because the Disputed Domain Name incorporates the DISCOVERY Mark in its entirety and merely adds the dictionary term ‘inc.’ (an abbreviation for incorporated or incorporation), followed by the gTLD ‘.com’.
See also Lockheed Martin Corp. v. Roberson, FA 323762 (Forum October 19, 2004) (finding that adding the ccTLD “.us” to the mark of another in creating a domain name did not distinguish one from the other under the terms of the Policy).
Further see Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains [“gTLD’s”] are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the <flowersfoodsinc.us> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iv), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that there is nothing in the record before us suggesting that Respondent is the owner or beneficiary of a trademark or service mark that is identical to the <flowersfoodsinc.us> domain name. We conclude, therefore, that Respondent has no claim of rights to or legitimate interests in the domain name under Policy ¶ 4(c)(i). See, for example, Pepsico, Inc. v. Becky, FA 117014 (Forum September 3, 2002), finding that, because there was no evidence showing that a respondent owned a trademark or service mark reflecting a specific domain name, it could not lay claim to rights to or legitimate interests in that domain name under Policy ¶ 4(c)(i).
We next observe that Complainant also asserts, and Respondent does not deny, that Respondent uses the <flowersfoodsinc.us> domain name to profit illicitly by passing itself off as Complainant in furtherance of a scheme to defraud unsuspecting suppliers of Complainant and other companies by posing as various officers of Complainant and sending email messages requesting price quotes for a variety of products and then placing fraudulent orders for such products putatively on behalf of Complainant to be shipped or delivered to various locations. Because such a use of the domain name is inherently illegitimate, it cannot be said that this use satisfies the express requirement of Policy ¶ 4(c)(ii) that Respondent’s use of the domain name be “in connection with a bona fide offering of goods or services.” See, for example, eLuxury.com Inc. v. WangJunJie, FA 1075554 (Forum November 30, 2007) (concluding that the sale of counterfeit products on a resolving website was evidence that a UDRP respondent did not make either a bona fide offering of goods or services by means of a disputed domain name).
We turn then to Complainant’s contention, which Respondent, once again, does not deny, that Respondent has not been commonly known by the challenged <flowersfoodsinc.us> domain name. In this connection we note that the pertinent WHOIS information identifies the registrant of the domain name only as an individual whose name is recited throughout this Decision as “[John Doe as Holder of Domain Name <flowersfoodsinc.us>],” which name does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the contested domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(iii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018), finding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent only as “Bhawana Chandel.”
Finally, under this head of the Policy, because Respondent evidently uses the <flowersfoodsinc.us> domain name to profit illicitly by passing itself off as Complainant in furtherance of a scheme to defraud unsuspecting suppliers of Complainant and other companies, as described above, we cannot conclude that Respondent is making “a legitimate noncommercial or fair use” of it within the meaning of Policy ¶ 4(c)(iv).
The Panel therefore finds that Complainant has satisfied all of the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent employs the challenged <flowersfoodsinc.us> domain name to profit illicitly from the conduct of a fraudulent scheme aimed at unsuspecting Internet users. Such a use is without question a demonstration of bad faith in the registration and use of the domain name. See, for example, Eastman Chemical Company v. Lukas Moris, FA 1956649 (Forum August 23, 2021):
… Respondent registered and uses the disputed domain name in bad faith because Respondent uses the disputed domain name to impersonate Complainant in furtherance of a …[fraudulent]… scheme. A domain name that is used in connection with a …[fraudulent]… scheme over email may be evidence of a domain name registered and used in bad faith under Policy ¶ 4(b)…(iv).
Moreover, it is obvious from the evidence that Respondent knew of Complainant and its rights in the FLOWERS FOODS mark when it registered the contested domain name. This further illustrates Respondent’s bad faith in registering it. See, for example, Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum January 5, 2018):
[T]he fact Respondent registered a domain name that looked identical to the …[Complainant’s]… mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration [and therefore registered the domain name in bad faith].
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the usTLD Policy, the Panel concludes that relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <flowersfoodsinc.us> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 29, 2021
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