Weetabix Limited v. J. Clarke

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Weetabix Limited v. Mr. J. Clarke

Case No. D2001-0775

1. The Parties

The Complainant is Weetabix Limited of Weetabix Mills, Burton Latimer, Kettering,

Northants NN15 5JR, United Kingdom, represented by Mr. Jonathan Moore and Mr. Richard

Santy of Hammond Suddards Edge, Birmingham, United Kingdom.

The Respondent is Mr. J. Clarke, of Clondalkin, Dublin 22, Ireland.

2. The Domain Name and Registrar

This dispute concerns the domain name <readybrek.com>.

The Registrar is Easyspace Limited, of West Byfleet, Surrey, United Kingdom.

3. Procedural History

This is an administrative proceeding pursuant to the Uniform Domain Name Dispute

Resolution Policy ("the Policy") adopted by the Internet Corporation

for Assigned Names and Numbers ("ICANN") on August 26, 1999, the Rules

for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October

24, 1999, ("the Rules") and the Supplemental Rules for Uniform Domain

Name Dispute Resolution Policy ("the Supplemental Rules") of the WIPO

Arbitration and Mediation Center ("the Center").

The Complaint was received by the Center by email on June 12, 2001, and in

hardcopy on June 25, 2001. The Complaint was acknowledged on June 13, 2001.

The following day, registration details were sought from the Registrar. On June

21, 2001, the Registrar confirmed that the disputed domain name is registered

in the name of the Respondent, whose address is recorded as "Clondalkin,

Dublin, Dublin 22 IE" and that the Policy applies. The Respondent’s telephone

and fax numbers, as held by the Registrar, are both 00000000. His email address

is recorded as "nameinfo@yahoo.com".

On June 27, 2001, the Complainant notified the Center that the hard copy of

the Complaint sent by the Complainant to the Respondent’s address, as recorded

by the Registrar, had been returned as undeliverable. On June 27, 2001, the

Center satisfied itself that the Complainant had complied with all formal requirements,

including payment of the prescribed fee. On June 28, 2001, the Center formally

dispatched a copy of the Complaint to the Respondent by post/courier and dispatched

a letter by fax and email (both without attachments) to notify the Respondent

of the commencement of this administrative proceeding and sent copies to the

Complainant, the Registrar and ICANN.

The last day specified by the Center for a Response was July 16, 2001. On that

day, a Response which did not comply with the formal requirements of the Rules

was filed by email from "nameinfo@yahoo.com". Hardcopies were filed

on July 27, 2001. On July 18, 2001, the Complainant’s representative

filed an unsolicited reply.

On July 24, 2001, the Center notified the parties of the appointment of Alan L. Limbury

to serve as panelist, Mr. Limbury having submitted a Statement of Acceptance

and Declaration of Impartiality and Independence. On that day, the Center transmitted

the case file to the Panel and notified the parties of the projected decision

date of August 7, 2001.

The language of the proceeding was English.

The Panel is satisfied that the Complaint was filed in accordance with the

requirements of the Rules and Supplemental Rules; payment was properly made;

the Panel agrees with the Center’s assessment concerning the Complaint’s compliance

with the formal requirements; the Complaint was properly notified to the Respondent

in accordance with paragraph 2(a) of the Rules; an informal Response was filed

and the administrative panel was properly constituted.

4. Factual Background (uncontested facts)

For over 50 years, Readybrek has been one of the most well-known breakfast

cereals in England and internationally. Turnover is estimated at around £17

million per year.

The Complainant has registered the marks READYBREK and READY BREK in the United

Kingdom and the European Community as follows:

(i) Community Registered Trademark E42762, dated April 1, 1996, for the mark

READYBREK for class 30 goods - "Cereal preparations for human consumption".

(ii) United Kingdom Registered Trademark No.753330, dated August 8, 1956,

for the mark READYBREK for class 30 goods – "Cereal preparation for food

for human consumption."

(iii) United Kingdom Registered Trademark No. 968846, dated October 13, 1971,

for the mark READY BREK for class 30 goods – "Cereal preparation for food

for human consumption."

The Complainant is also the registrant of the domain name <readybrek.co.uk>.

The Registrar’s record of the registration of the disputed domain name was

created on April 22, 2000. The disputed domain name does not resolve to an active

web site.

A letter dated March 20, 2001, from the Complainant's solicitors to the Respondent

at the address provided by the Respondent to the Registrar upon registration

of the disputed domain name was returned by the Irish Post Office on April 11,

2001, due to the address being incomplete. All of the persons by the name of

J Clarke in the Dublin area telephone book were contacted by the Complainant’s

solicitors. None admitted to owning the disputed domain name. An enquiry agent

engaged by the Complainant was unable to find the Respondent after two weeks

of searching.

5. Parties’ Contentions

A. Complainant

The name "readybrek" could not have been chosen for any reason other

than its association with the Complainant and its registered trademarks. The

only reasons that the Respondent would choose to register the disputed domain

name are to pass himself off as being connected with the Complainant and intentionally

to attract, for commercial gain, Internet users to his website or to compel

the Complainant or a competitor to incur the costs and legal expenses of purchasing

the domain name from the Respondent or preventing him from using it.

By registering the disputed domain name, the Respondent is threatening to infringe

the Complainant's rights. Unauthorized use of the name READYBREK in relation

to goods or services which are not similar to those for which the trademark

is registered takes unfair advantage of, and is detrimental to, the distinctive

character and repute of the registered trademarks which are well known in the

United Kingdom and elsewhere.

The Respondent has registered the domain name in a blatant attempt to capitalize

unfairly on the fame of the READYBREK trademark. Paragraph 4(b) of the Policy

sets out a non-exclusive list of factors that evidence bad faith. Previous Panel

decisions, however, have explicitly held that bad faith is not limited to these

factors. Instead, the Panel has held that when a registrant could not use the

name without violating the Complainant's rights under the applicable law, bad

faith exists even if the registrant has done nothing but register the name.

If the Complainant's mark is distinctive, as in the case of the READYBREK mark,

bad faith is found if it is unlikely that the Registrant would have selected

the domain name without knowing of this reputation. In Veuve Cliquot Ponsardin,

Maison Fondée en 1772 v. The Polygenix Group Co. (WIPO

Case No. D2000-0163), the Panel held that "<veuvecliquot.org>

is so obviously connected with such a well-known product that its very use by

someone with no connection with the product suggests opportunistic bad faith."

See also Empresa Brasileira de Telecomunicaçőes S.A. – Embratel v. Kevin

McCarthy (WIPO Case No. D2000-0164)

"The 'passive holding' of the domain name <embratel.com> with absolute

knowledge of the damages that such conduct causes to the legitimate owner of

EMBRATEL trademark constitutes a continuous 'use' with bad faith of the domain

name"; Cellular One Group v. Paul Brien (WIPO

Case No. D2000-0028) "It would be difficult, perhaps impossible,

for the Respondent to use the Domain Name as the name of any business, product

or service for which it would be commercially useful without violating Complainant's

rights."

The above cases also demonstrate that use of the domain name is unnecessary

for a finding of bad faith.

B. Respondent

[The panel admits the informal response in the interests of fairness to both

parties. This is partially summarized].

Given the openness of the World Wide Web, I am intentionally guarded with my

personal details.

The domain name readybrek.com is "parked" without any web pages or

e-mail facilities. I was unaware of e-mail to postmaster@readybrek.com.

Dot com (.com) is a world wide recognized top-level domain

and is not country specific, in this global context I submit readybrek.com should

be viewed.

Readybrek is not registered as a U.S.A. trademark, where .com

is the widely used Internet address. Nor is the Complainant's product commonly

known or used in the U.S.A. The Quaker Oats Company with its Oatmeal product

range dominates as America's number one seller.

On checking the WHOIS records the Complainant originally registered ready-brek.com

and ready-brek.co.uk in Jan'1997 but did not register readybrek.com and it appears

only recently registered readybrek.co.uk. Now over four years later the Complainant

has belatedly decided it owns readybrek.com and I have no rights. Perhaps the

Complainant felt no ownership for readybrek.com in 1997 or during the intervening

years.

Readybrek sounded catchy to me, it is in fact the name of a

dance track by DJ Toolz and is on the CD Break Beats 'N' Grooves Vol.2 and the

compilation CD Coldcut, Cold Krush Cuts (West) and was available so I registered

it.

C. Reply

[The panel admits the following part of the Reply because it

responds to matter in the informal Response which the Complainant could not

reasonably have anticipated (Footnote

1)].

The Respondent states that he registered Readybrek.com because Readybrek sounded

a catchy title and is indeed the name of a dance track by DJ Toolz. I have contacted

DJ Toolz, AKA "Jason", who records under the Ninja Tunes label. He

has informed me that the song was in fact titled as a play on words between

ready break (break beat song) and Readybrek (the breakfast cereal) i.e. the

song title is actually a reference to the Complainant’s brand and not an independent

reference.

6. Discussion and Findings

To qualify for cancellation or transfer, a Complainant must prove each element

of paragraph 4(a) of the Policy, namely:

(i) the disputed domain name is identical or confusingly similar to a trademark

or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the

domain name; and

(iii) the disputed domain name has been registered and is being used in bad

faith.

Identity or confusing similarity

Essential or virtual identity is sufficient for the purposes of the Policy

(Footnote 2). The panel finds the disputed domain name

is identical to the Complainant’s trademark.

The Complainant has established this element.

Illegitimacy

The Complainant has not authorized the Respondent to use its trademark nor

to register the disputed domain name. The name of the Respondent is not and

does not include any part of any of the disputed domain name. The disputed domain

name is not being used in connection with a bona fide offering of goods or services.

The Respondent describes the disputed domain name as "parked" without

any web pages or e-mail facilities. The Respondent has made no attempt to demonstrate

any of the circumstances specified in paragraph 4(c) of the Policy.

Under these circumstances the panel is satisfied that the Respondent has no

right to or interest in the disputed domain name (Footnote

3).

Bad faith registration and use

A finding of bad faith may be made where the Respondent "knew or should

have known" of the registration and use of the trademark prior to registering

the domain name (Footnote 4). The

Respondent says the name sounded catchy to him. He refers to the dance track

"Readybrek" by DJ Toolz (which the Complainant has shown was named

after the Complainant’s breakfast cereal); the Respondent says the domain name

was available so he registered it. He does not say he was at the time unaware

of the trademark READYBREK but argues that the trademark is not registered or

well-known in the United States. Although the Respondent’s explanation is implausible,

it is not possible for the panel, in a proceeding of this kind, to decide whether

or not it is false.

The Respondent registered the disputed domain name with false contact details

which prevented the Complainant from verifying the receipt of its communications

with him. This alone, in the opinion of this panel, is sufficient to establish

registration in bad faith, the circumstances set out in paragraph 4(b) of the

Policy not being exhaustive.

The ‘use’ requirement has been found not to require positive action, inaction

being within the concept (Footnote 5).

In the leading case on passive use (Footnote

6), passive holding was held to amount to acting in bad faith where:

(i) the Complainant’s trademark had a strong reputation and was widely known;

(ii) the Respondent provided no evidence of any actual or contemplated good

faith use by it of the domain name;

(iii) the Respondent had taken active steps to conceal its true identity, by

operating under a name that is not a registered business name;

(iv) the Respondent had actively provided, and failed to correct, false contact

details, in breach of its registration agreement, and

(v) taking into account all of the above, it was not possible to conceive of

any plausible actual or contemplated active use of the domain name by the Respondent

that would not be illegitimate, such as by being a passing off, an infringement

of consumer protection legislation, or an infringement of the Complainant’s

rights under trademark law.

The circumstances of this case are strikingly similar. Although the strength

of the Complainant’s trademark may not be as great as in the case of Telstra,

it is hard to conceive any use to which the Respondent could put the domain

name without infringing the Complainant’s rights.

Accordingly the Panel finds that the Complainant has established that the disputed

domain name was registered and is being used in bad faith.

7. Decision

Pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel directs

that the domain name <readybrek.com> be transferred to the Complainant.

Alan L. Limbury

Sole Panelist

Dated: August 1, 2001

Footnotes:

1. See Goldline International, Inc. v. Gold Line (WIPO

Case No. D2000-1151). (back to text)

2. See The Stanley Works and Stanley Logistics, Inc v. Camp Creek. Co.,

Inc. (WIPO Case No. D2000-0113), Toyota

Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises

Ltd. (WIPO Case No. D2000-0802) and

Nokia Corporation v. Nokiagirls.com a.k.a IBCC (WIPO

Case No. D2000-0102). For a typical US case see Sporty’s Farm L.L.C.

v. Sportsman’s Market, Inc., 202 F.3d 489, 497-98 (2d Cir. 2000) (the differences

between the trademark "sporty’s" and the domain name <sportys.com>

– specifically, an apostrophe in the trademark and the addition of .com in the

domain name – are "inconsequential," such that the domain name is

"indistinguishable" from and "certainly ‘confusingly similar’

to the protected mark"). (back to text)

3. See State Farm Mutual Automobile Insurance Company v. Rocky E. Faw

(NAF case FA0094971) and Leland Stanford Junior University v. Zedlar Transcription

& Translation (NAF case FA0094970). (back to text)

4. See SportSoft Golf, Inc. v. Hale Irwin’s Golfers’ Passport (NAF Case

No. FA0094956). Likewise Marriott International, Inc. v. John Marriot

(NAF Case No. FA0094737); 163972 Canada Inc. v. Sandro Ursino (DeC Case

No. AF-0211) and Centeon L.L.C./Aventis Behring L.L.C. v. Ebiotech.com

(NAF Case No. FA0095037). (back to text)

5. See Telstra Corporation Limited v. Nuclear Marshmallows, (WIPO

Case No. D2000-0003); Barney’s, Inc. v. BNY Bulletin Board (WIPO

Case No. D2000-0059); CBS Broadcasting, Inc. v. Dennis Toeppen (WIPO

Case No. D2000-0400); Video Networks Limited v. Larry Joe King (WIPO

Case No. D2000-0487); Recordati S.P.A. v. Domain Name Clearing Company

(WIPO Case No. D2000-0194) and Revlon

Consumer Products Corporation v. Yoram Yosef aka Joe Goldman (WIPO

Case No. D2000-0468). (back to text)

6. See Telstra Corporation Limited v. Nuclear Marshmallows (WIPO

Case No. D2000-0003). (back to text)

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