Decisión del Panel Administrativo nº D2013-1487 of WIPO Arbitration and Mediation Center, November 04, 2013 (case Boulder Brands Inc. v. August n Paulsen)

• Resolution Date: November 04, 2013
• Issuing Organization: WIPO Arbitration and Mediation Center
• Decision: Transfer
• Dominio: Generic Domains

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Boulder Brands Inc. v. August n Paulsen

Case No. D2013-1487

1. The Parties

The Complainant is Boulder Brands Inc. of Niwot, Calorado, United States of America, represented by SafeNames Ltd., United Kingdom.

The Respondent is August n Paulsen of Sichuan, China.

2. The Domain Name and Registrar

The disputed domain name [udisglutensfree.com] is registered with Shanghai Yovole Networks, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 22, 2013. On August 22, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 23, 2013, 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. On September 3, 2013, the Center transmitted an email to the parties in both Chinese and English regarding the language of the proceeding. On September 5, 2013, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 10, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 30, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 1, 2013.

The Center appointed Susanna H.S. Leong as the sole panelist in this matter on October 14, 2013. 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

The Complainant, Boulder Brands Inc., is a supplier of gluten-free and health and wellness products in the United States, Canada and various other Countries. The Company operates in two segments: Smart Balance and Natural. The Smart Balance segment consists of its branded products in spreads, butter, grocery and milk. The Natural segment consists of its Earth Balance, Glutino and Udi's Gluten Free branded products. In the current proceedings the Complainant is bringing forward the complaint for one of its brands, Udi’s Healthy Foods, LLC (Udi’s) also known as Udi’s Gluten Free. The Complainant has registered various trademarks relating to its UDI’S Gluten Free brand, including UDI’S and UDI’S GLUTEN FREE in the United States and the European Union since 2006. The Complainant actively uses the UDI’S and UDI’S GLUTEN FREE trademarks in relation to the advertisement and business operations relating to its UDI’S GLUTEN FREE set of branded goods and services. In particular, the UDI’S GLUTEN FREE marks form a clear and visible part of the Complainant’s online material on its website.

The Respondent registered the disputed domain name [udisglutensfree.com] on June 5, 2013.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights on the following grounds:

1. The Complainant has registered various trademarks relating to its Udi’s Gluten Free brand, including UDI’S and UDI’S GLUTEN FREE in the United States and the European Union since 2006. The Complainant actively uses the UDI’S and UDI’S GLUTEN FREE trademarks in relation to the advertisement and business operations relating to its UDI’S GLUTEN FREE set of branded goods and services. In particular, the UDI’S GLUTEN FREE marks form a clear and visible part of the Complainant’s online material on its website.

2. The application of confusing similarity test under the UDRP involves a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name. In this case, the Complainant’s mark, disregarding the spaces and apostrophe, UDISGLUTENFREE when compared to the disputed domain name [udisglutensfree.com], clearly demonstrates that visually there is no significant difference, and the disputed domain name consists of the entirety of the Complainant’s registered trademark with the addition of the letter “s”. As such, the addition of the letter “s” to the Complainant’s UDI’S GLUTEN FREE trademark does not diminish the overall similarity of the domain name string and the trademark. The Complainant asserts that the Respondent’s conduct in registering the disputed domain name is equivalent to typosquatting.

   The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name on the following grounds:

1. Prior to any notice of the current dispute there was no evidence of the Respondent’s use, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. The Complainant asserts that the Respondent is passing itself off as the Complainant and therefore, the Respondent does not have a legitimate right in the disputed domain name. The Respondent has replicated the Complainant’s website in order to falsely mislead Internet users into believing that the disputed domain name is owned by the Complainant. Consequently, the Complainant contends that the Respondent cannot claim to be offering bona fide goods or services.

2. Prior to any notice of the current dispute, the Complainant contends that the Respondent has not made use of, or demonstrable preparations to use, the disputed domain name or names corresponding to the disputed domain name in connection with a bona fide offering of goods or services. The Complainant places particular emphasis on the term bona fide as it has long been established that rights and legitimate interests cannot emanate from situations where a registrant has chosen to register a particular domain name that is a typo-variant of a trademark, in order to create an impression of association with the holder of such trademark. The Complainant contends that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods, but intentionally trading on the fame of the Complainant’s...