George Weston Bakeries Inc.
v. Charles McBroom
Claim Number: FA0703000933276
PARTIES
Complainant is George Weston Bakeries Inc. (“Complainant”), represented by Richard
M. Assmus, of Mayer, Brown, Rowe & Maw LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gwbakeries.mobi>, registered with GoDaddy.com,
Inc.
PANEL
The undersigned certifies that he has acted independently and
impartially and to the best of his knowledge has no known conflict in serving
as Panelist in this proceeding.
Calvin A. Hamilton as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 6, 2007; the
National Arbitration Forum received a hard copy of the Complaint on March 7, 2007.
On March 7, 2007, GoDaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <gwbakeries.mobi> domain name is
registered with GoDaddy.com, Inc. and
that Respondent is the current registrant of the name. GoDaddy.com,
Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and
has thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On March 15, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of April 4, 2007 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent via e-mail,
post and fax, to all entities and persons listed on Respondent’s registration
as technical, administrative and billing contacts, and to postmaster@gwbakeries.mobi by e-mail.
A timely Response was received and determined to be complete on April 3, 2007.
An Additional Submission from Complainant was timely received on April
9, 2007, which has also been considered along with the rest of the materials
submitted for our review.
On April 11, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Calvin A. Hamilton as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the
following assertions:
1.
The
domain name <gwbakeries.mobi> is identical and/or confusingly similar to
a trademark or service mark in which Complainant has common law trademark rights;
2.
Respondent
has no rights or legitimate interests in respect of the domain name that is
subject to the Complaint;
3.
Respondent
registered and used the domain name in bad faith.
B. Respondent makes the
following assertions:
1.
When he
registered the disputed domain name, “gwbakeries” was not a registered
trademark.
2.
The
registration of the domain name <gwbakeries.mobi> was for
purposes of resale and that Respondent was not concerned with who might
purchase the domain name.
3.
Respondent
contends that he did not register and hold the domain name with the specific
intent to trade off Complainant’s goodwill.
4.
As a
reseller of an item, such as a domain name, it is a prerogative of Respondent to
request compensation that is in excess of out-of-pocket expenses related to the
item.
C. Complainant makes the
following assertions in its Additional Submission:
1.
Respondent
has admitted important facts as to the resale purposes of the registration and
use of the disputed domain name, together with the motivation of outrageously
trading on the goodwill of Complainant.
2.
Respondents’
admissions constitute further evidence of bad faith use and registration of the
disputed domain name.
FINDINGS
1)
Complainant
George Weston Bakeries Inc. is in the business of producing fresh bread, buns
and cake products distributed under a variety of well-known brands and private
labels.
2) Complainant registered and maintained a website to promote its
various brands and their respective products under the domain name <gwbakeries.com> on or about April
19, 2001, which has served as Complainant’s primary Internet presence for
customers and the general public including the information about Complainant as
well as information about the various food product offerings manufactured and
sold by Complainant. Complainant has provided evidence as to the existence of
common law rights on the trademark.
4) Respondent registered an identical domain name under a different
top-level domain name extension, <gwbakeries.mobi>, on November
27, 2006.
5) Shortly thereafter, in December 2006, Respondent contacted
Complainant in an attempt to sell the <gwbakeries.mobi> domain name.
7) <gwbakeries.mobi> is identical or confusingly similar to
Complainant’s mark.
8) Respondent has no rights or legitimate interests in respect of the
domain name <gwbakeries.mobi>.
9) Registration and use of <gwbakeries.mobi> was made in
bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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:
(1) the domain name registered by Respondent is
identical or confusingly similar to a trademark or service mark in which
Complainant has rights;
(2) Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and is
being used in bad faith.
Complainant does not hold a trademark registration for
the GW BAKERIES mark. However,
Complainant alleges that it has longstanding common law rights in the mark as
it has continously used and established common law rights in the trademarks
“George Weston Bakeries,” “GW Bakeries” or variations thereof in connection
with its food products by means of conspicuous use of the words “George Weston
Bakeries” in connection with its various brands and product lines as well as on
its Internet site, achieving significant name recognition through its growth
during the years. Further, Complainant
has been using the mark “GW Bakeries” in connection with its Internet site and
domain names since 2001.
Through its consistent and continuous use, the marks
used by Complainant in connection with its food products have become distinctive
and have engendered significant goodwill in
In order to satisfy Policy ¶ 4(a)(i), Complainant does
not need to have a valid trademark registration so as to demonstrate its rights
in a mark. See Artistic
Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶
4(a)(i) does not require a trademark registration if a complainant can
establish common law rights in its mark); see
also SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO
Complainant alleges that it has continuously and
extensively used the GW BAKERIES and GEORGE WESTON BAKERIES marks since at
least
Complainant asserts that the <gwbakeries.mobi> domain name is identical to its GW BAKERIES mark. The Panel concludes that the elimination of spaces between terms of the mark and the addition of the top-level domain “.mobi” are merely functional changes required of every domain name and that as a result, the <gwbakeries.mobi> domain name is identical to Complainant’s GW BAKERIES mark pursuant to Policy ¶ 4(a)(i). See Starkey v. Mr. Bradley, FA 874575 (Nat. Arb. Forum Feb. 12, 2007) (“The suffix .mobi should be treated the same way as .com and should be ignored when comparing the mark and the disputed domain name.”); see also The Vanderbilt University v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (finding the <vanderbilt.mobi> domain name to be identical to the VANDERBILT mark because it did not add anything except the top-level domain “.mobi”).
According to the
abovementioned reasoning, the Panel
finds that the disputed domain name <gwbakeries.mobi>
is identical, and confusingly similar, to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has made a prima
facie case that Respondent lacks rights and legitimate interests in the
disputed domain name under Policy ¶ 4(a)(ii), and the burden then shifts to
Respondent to show it does have rights or legitimate interests. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum
Sept. 25, 2006) (“Complainant must first 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, then the burden shifts to Respondent to show
that it does have rights or legitimate interests in the subject domain
names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum
Aug. 18, 2006) (holding that the complainant must first make a prima facie
case that the respondent lacks rights and legitimate interests in the disputed
domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent
to show that it does have rights or legitimate interests in a domain name).
Complainant alleges that there is no evidence in the record suggesting that Respondent is commonly known by the domain name in dispute, including the WHOIS information, which lists “Charles McBroom” as the registrant of the disputed domain name. Complainant also asserts that it has not authorized or licensed Respondent to register or use a domain name incorporating Complainant’s GW BAKERIES mark. The Panel agrees that Respondent is not commonly known by the disputed domain name. Therefore, Respondent does not have rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain name and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also Elenie Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant maintains that Respondent has
never made active use of the <gwbakeries.mobi> domain name
since registering it on November 27, 2006.
Respondent’s non-use of the <gwbakeries.mobi> domain name
does not constitute a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Bloomberg L.P. v. SC Media Servs. and Info. SRL, FA
296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly
appropriating Complainant’s mark and is not using the <bloomberg.ro>
domain name in connection with an active website. The Panel finds that the passive holding of a
domain name that is identical to Complainant’s mark is not a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) nor is it a
legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); see also Hewlett-Packard
Co. v. Shemesh, FA 434145 (Nat.
Arb. Forum Apr. 20, 2005) (finding that passive holding of a domain name that
is identical to a complainant’s mark is not a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or
fair use pursuant to Policy ¶ 4(c)(iii)).
The Complaint also asserts that Respondent contacted Complainant with an offer to sell the <gwbakeries.mobi> domain name registration for $750,000. The Panel concludes that this amount of money is in excess of Respondent’s out-of-pocket costs associated with registering the disputed domain name, and that such a disproportionate offer provides evidence that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).
Based on the above, the Panel finds that Complainant
has satisfied the burden of proof under Policy ¶ 4(a)(ii).
The record shows that Respondent
contacted Complainant after Respondent registered the <gwbakeries.mobi> domain name with an offer to sell the
contested domain name. After Complainant
asked Respondent to make an offer, Respondent allegedly asked for
$750,000. Complainant claims that this
amount is far in excess of Respondent’s out-of-pocket costs, which Complainant
estimates at only $15 per year, giving Respondent a 50,000% return on its
initial investment if Complainant were to accept Respondent’s offer. Based on Complainant’s allegations, the Panel
understands that Respondent has registered and used the disputed domain name in
bad faith pursuant to Policy ¶ 4(b)(i). See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the
respondent’s offer to sell the domain name for $2,000 sufficient evidence of
bad faith registration and use under Policy ¶ 4(b)(i)); see also Universal
City Studios, Inc. v. Meeting Point Co., D2000-1245 (WIPO Dec. 7, 2000)
(finding bad faith where the respondent made no use of the domain names except
to offer them to sale to the complainant).
Complainant further alleges that Respondent’s <gwbakeries.mobi> domain name has never been active. Respondent’s non-use of the disputed domain name since its registration in November 2006 indicates bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Am. Broadcasting Cos., Inc. v. Merrill Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s non-use of a domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
The Panel considers that Policy ¶ 4(a)(iii) has been satisfied in order to establish that Respondent registered and used the disputed domain name in bad faith.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gwbakeries.mobi> domain name be TRANSFERRED
from Respondent to Complainant.
Calvin A. Hamilton, Panelist
Dated: April 25, 2007
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