DECISION

Grupo Bimbo, S.A. de C.V. and Bimbo Bakeries USA, Inc. v. Domain Deluxe

Claim Number:  FA0405000276071

PARTIES

Complainants are Grupo Bimbo, S.A. de C.V. and Bimbo Bakeries USA, Inc. (collectively “Complainant”), represented by Russell N. Rippamonti and Linda M. Novak of Fish & Richardson P.C., 1717 Main Street, Suite 5000, Dallas, TX 75201.  Respondent is Domain Deluxe (“Respondent”), GPO 7628, Central, Hong Kong.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <bimbobakeries.com> and <orowheat.com>, registered with The Registry At Info Avenue d/b/a IA Registry.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding.

Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically May 25, 2004; the Forum received a hard copy of the Complaint May 26, 2004.

On May 28, 2004, The Registry At Info Avenue d/b/a IA Registry confirmed by e-mail to the Forum that the domain names <bimbobakeries.com> are <orowheat.com> are registered with The Registry At Info Avenue d/b/a IA Registry and that Respondent is the current registrant of the names. The Registry At Info Avenue d/b/a IA Registry has verified that Respondent is bound by the The Registry At Info Avenue d/b/a IA Registry 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 June 1, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 21, 2004, 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@bimbobakeries.com and postmaster@orowheat.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On June 28, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. The domain names registered by Respondent, <bimbobakeries.com> and <orowheat.com>, are confusingly similar to Complainant’s BIMBO and OROWEAT marks.

2. Respondent has no rights to or legitimate interests in the <bimbobakeries.com> and <orowheat.com> domain names.

3. Respondent registered and used the <bimbobakeries.com> and <orowheat.com> domain names in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainants Grupo Bimbo, S.A. de C.V. and Bimbo Bakeries USA, Inc. are in the bakery industry. 

Complainant, Grupo Bimbo, S.A. de C.V., is a Mexican corporation holding U.S. trademark registrations with the United States Patent and Trademark Office for marks consisting of and/or incorporating the word “BIMBO” (Reg. No. 1,413,535, issued October 14, 1986, Reg. No. 2,728,487, issued June 24, 2003 and Reg. No. 2,767,227, issued September 23, 2003).

 

Complainant, Bimbo Bakeries USA, Inc., is a wholly-owned subsidiary of Grupo Bimbo, S.A. de C.V. that holds trademark registrations with the United States Patent and Trademark Office for marks consisting of and/or incorporating the word “OROWEAT” (Reg. No. 468,466, issued April 21, 1964, Reg. No. 1,115,759, issued March 27, 1979, Reg. No. 1,251,280, issued June 21, 1983 and Reg. No. 1,585,973, issued March 6, 1990).

Complainant has used its BIMBO and OROWEAT marks in various forms in connection with the provision of bakery products to customers throughout the United States as early as 1986.

Respondent registered the disputed domain names <orowheat.com> and <bimbobakeries.com> July 8, 2002, and May 8, 2003, respectively.  Respondent is using the domain names to redirect Internet users to a website that hosts a search engine which provides links to a variety of websites and features a variety of advertisements.

Respondent has exhibited a pattern of registering domain names for registered and common law trademarks that contain only slightly different spellings that might be frequent typographical errors by one seeking to type the trademarks; Respondent then offers the domain names for sale.  Respondent has offered to sell the disputed domain names to Complainant for valuable consideration on at least one occasion.

DISCUSSION

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."

Respondent failed to submit a Response and in such cases the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain names; and

(3) the domain names have been registered and are being used in bad faith.

Identical to and/or Confusingly Similar

Complainant established by extrinsic proof in this proceeding that it has rights to and legitimate interests in the BIMBO and OROWEAT marks as evidenced by its registration with the United States Patent and Trademark Office and by its continued use of its marks in commerce for the last 18 years.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

The domain, <bimbobakeries.com>, registered by Respondent, is confusingly similar to Complainant’s BIMBO mark because the domain name incorporates Complainant’s mark and deviates from it only in the addition of the generic or descriptive term, “bakeries,” which describes Complainant’s business.  Mere addition of a generic or descriptive word to a registered mark does not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).  See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with Complainant’s registered mark “LLBEAN” does not circumvent Complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy); see also Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term).

Additionally, the domain name, <orowheat.com>, registered by Respondent, is confusingly similar to Complainant’s OROWEAT mark because the domain name incorporates Complainant’s mark and deviates from the mark only because Respondent added the letter “h” to the OROWEAT mark.  Addition or deletion of a letter does not significantly distinguish the domain name from the mark under the Policy.  See America Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding that Respondent’s domain name, <americanonline.com>, is confusingly similar to Complainant’s famous AMERICA ONLINE mark); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights to or Legitimate Interests

Complainant established using extrinsic proof in this proceeding that it has rights to and legitimate interests in the marks contained in their entirety within the disputed domain name that Respondent registered.  Complainant has alleged that Respondent has no rights or legitimate interests in the domain names.  Due to Respondent’s failure to respond to the Complaint, the Panel is permitted to assume that Respondent lacks rights and legitimate interests in the disputed domain name because once Complainant makes such allegations and a prima facie showing that they are true, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

Moreover, where Respondent fails to file a Response, the Panel may accept as true all reasonable allegations and inferences in the Complaint.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the Complaint to be deemed true); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

Respondent is using the <bimbobakeries.com> and <orowheat.com> domain names to redirect Internet users to an unaffiliated search engine website.  Respondent’s use of domain names that are confusingly similar to Complainant’s BIMBO and OROWEAT marks to redirect Internet users interested in Complainant’s goods and services to a commercial website unrelated to Complainant’s is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(iii).  See Geoffrey, Inc. v. Toyrus.com, FA 150406 (Nat. Arb. Forum Apr. 5, 2003) (holding that Respondent’s use of the disputed domain name, a simple misspelling of Complainant’s mark, to divert Internet users to a website that featured pop-up advertisements and an Internet directory, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name); see also U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that Respondent’s use of Complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services). 

Furthermore, neither the record nor Respondent’s WHOIS domain name registration information suggests that Respondent is known by the domain names or by Complainant’s marks, pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Complainant urges that Respondent registered and used the disputed domain names in bad faith.  Complainant alleges that Respondent registered and used the domain names for Respondent’s commercial gain by diverting Internet users who seek Complainant’s well-known marks to Respondent’s commercial website.  Respondent also has engaged in a practice of such diversion for commercial gain and has made at least one offer to sell the confusingly similar domain names to Complainant for gain that is greater than reasonable registration costs.  This constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Bank of America Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating that “[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website” in holding that the domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iv)).

Respondent’s bad faith also can be deduced from Respondent’s offer to sell the disputed domain names to Complainant for an increased amount of consideration proceeding Complainant’s initial price offer.  Offers to sell a domain name in dispute for valuable consideration evidences bad faith.  See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where Respondent offered domain names for sale); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).

Moreover, Respondent registered the domain name for the purpose of disrupting Complainant’s business by redirecting Internet traffic intended for Complainant to Respondent’s website.  Registration of a domain name for purposes of disrupting business is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that Respondent has diverted business from Complainant to a competitor’s website in violation of Policy 4(b)(iii)).

            The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

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 <bimbobakeries.com> and <orowheat.com> domain names be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: July 12, 2004

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