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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Associated British Foods v. Domain Admin

Case No. D2005-0283

1. The Parties

The Complainant is Associated British Foods, London, United Kingdom of Great Britain and Northern Ireland represented by A.A. Thornton & Co, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Domain Admin, United States of America.

2. The Domain Name and Registrar

The disputed domain name <associatedbritishfoods.com> is registered with Intercosmos Media Group d/b/a directNIC.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 24, 2005. On March 21, 2005, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On March 23, 2005, directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 April 5, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was April 25, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 2, 2005.

The Center appointed Martine Dehaut as the Sole Panelist in this matter on May 18, 2005. 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.

On June 6, 2005, the Panel issued procedural order No. 1 addressed to the Complainant, requesting further evidence in relation with the goodwill and reputation associated with its trademark Associated British Foods. The Complainant was invited to file its response by June 17, 2005.

On June 17, 2005, the Complainant filed further observations in response to the order.

4. Factual Background

In accordance with the information provided by the Complainant, the accuracy of which has not been objected by the Respondent, Associated British Foods plc is “an international food, ingredients and retail group with annual sales of (GBP) 5.2 billion and over 35,000 employees. The group is one of Europe’s largest food companies with a wide range of successful brands and products in the food sector, and an increasingly strong presence in advanced research and technology, where (it) is turning natural products into innovative ingredients for the food, personal care and pharmaceutical industries. A significant supplier of branded and non-branded grocery products and a leading textile retailer, (it has) significant business in Europe, Australasia and the United States.”

No information concerning the Respondent is available.

The contested domain name <associatedbritishfoods.com> is active: it offers in a single page a link with “amazon.co.uk”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has been using the trademark ASSOCIATED BRITISH FOODS since 1960, in connection with products belonging to international classes 1, 5, 29, 30, 31 and 32, and that the disputed domain name is identical. The Complainant also mentions that ASSOCIATED BRITISH FOODS is its company name. The Respondent has no legitimate interest in the disputed domain name, and “any use of it by the Respondent would amount to passing-off in the UK”. Lastly the Complainant submits that the domain name was registered (i) in order to prevent the Complainant from reflecting the mark in a corresponding domain, (ii) to attract, for commercial gain, Internet users to the website or other online location by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website, its location and products on the website, and (iii) for the purpose of disrupting its business.

The evidence filed by the Complainant in support of these statements consists in particular of:

- Copies of printout of databases searches for the Whois information on the disputed domain name, showing that the Respondent has “no valid address as domain is pending transfer”, and that the fax number to contact the Respondent is “11 000 111 222”. The Complainant claims that this incomplete details and unrealistic fax number tend to evidence the bad faith of the Respondent.

- Copies of printouts from the Complainant’s websites (“www.abf.co.uk”), outlining the activities and history of Associated British Foods plc. Relevant extracts of these printouts are quoted hereinfater:

“We are the UK market leader in bread and sugar and the UK brand leader in specialty teas; the largest purchaser of primary products from UK farmers; the brand leader in Australian bread; number one in low calorie natural sweeteners in the US; UK’s leading crispbread brand; world leader in antacid ingredients; leading animal feed supplier in the UK; leading bakery ingredients supplier in UK and US; world’s largest seed enhancement company; largest foreign investor in Polish Sugar; fifth biggest supplier of animal feed in China.

…/…

“Associated British Foods can be categorised into four segments. These are grocery, primary food and agriculture, ingredients, and retail. The group has sales worldwide and manufacturing operations across Europe, North America, Asia, Australia and New Zealand.

“Grocery ABF is a major international manufacturer of both branded and private label grocery products many of which are household names such as Allinsons, Kingsmill, Twinings, Ovaltine, Mazola, Silver Spoon and Ryvita.

“Primary foods and agriculture. ABF operates at the heart of the UK agricultural industry. British sugar is Europe’s most efficient sugar producer. ABNA is a group of businesses that includes ABN, the Allied Grain Group, Trident and Kings. It is a leader in the procurement and supply of agricultural products and services in the UK and overseas. It works closely with farmers to enhance their businesses.

“Ingredients. ABF is focused on high added value ingredients. It applies its skills producing functional ingredients from natural products, which are widely used by the food industry. ABF is transferring its skills to new growth areas such as the cosmetics and pharmaceutical sector. Abitec Corporation in North America is a leading supplier of such ingredients to brand leaders in personal care products worldwide.

“Retail. ABF has a significant presence in High Street retailing through its fast growing Primark value fashion and clothing chain, trading from 120 stores and around 2,3 million sq ft of selling space in the UK and Republic of Ireland.”

- A statement issued by an employee of the Complainant in relation to a telephone call received in connection with a possible assignment of the disputed domain name.

- Copies of various emails sent by the representative of the Complainant to the Respondent, concerning an offer to purchase the disputed domain name for the sum of 1,000 pounds sterling. Apparently the Respondent did not reply to any of these mails.

In response to Procedural Order No. 1, the Complainant stated that the evidence of use that had been filed was “sufficient to establish a goodwill and reputation in ASSOCIATED BRITISH FOODS on behalf of the Complainant”, and made a long description of what constitutes passing off under UK law. Enclosed with this response where summaries of relevant UK court decisions in matters involving passing off in similar circumstances.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant must establish each of the following:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

Identical or Confusingly Similar

The Complainant mentions that it has rights over ASSOCIATED BRITISH FOODS as a trademark and as a company name.

In accordance with the exact wording of the rules referred to above, the Complainant must establish the existence rights in a trademark identical or similar to the disputed domain name.

Substantiation of Complainant’s rights

Trade names (including company names) fall outside the scope of the Policy. In this respect, the panel refers to a number of decisions issued previously (See WIPO Case No. D2000-1019, Music United.com v. J. Nauta, WIPO Case No. D2001-0507, Sintef v. Sintef.com, and WIPO Case No. D2001-0744, University of Konstanz v. uni-konstanz.com).

Hence, the Panel must determine whether the Complainant, Associated British Foods plc, owns trademark rights over the expression ASSOCIATED BRITISH FOODS.

The Complainant does not rely on any trademark application or registration, either prior or subsequent to the registration of the contested domain name.

However, unregistered trademarks, or common-law trademarks, are enforceable rights which fall within the scope of the Policy. There is a clear consensus in UDRP decisions with respect to this issue (for a thorough overview of the admissibility of unregistered trademark rights, the Panel refers the parties to CavinKare Private Limited v. LaPorte Holdings, Inc. and Horoshy, Inc., WIPO Case No. D2004-1072).

Now, as unregistered trademark rights are not enforceable under all jurisdictions, it is necessary, as a preliminary step, to define which is the applicable law. The Complainant is established in the UK, and claims unregistered rights in its country. The issue is therefore to verify whether the Complainant is indeed in a position to allege unregistered trademark rights under UK law.

When dealing with common law trademarks in the UK, it is necessary to understand the meaning of the concept of passing off. In this regard, the panel in Margaret Drabble v. Old Barn Studios Limited, WIPO Case No. D2001-0209 stated that “the easiest way of defining a common law trademark is to say that it is an unregistered mark used by its proprietor in the course of trade, the unauthorized use (or imitation) of which by another trader will lead to passing off. Passing off is a tort based upon the proposition that it is unlawful to represent, contrary to fact, that one’s goods or services are the goods or services of another. Commonly, such misrepresentations are made by using a name or mark, which identifies the claimant or is otherwise a symbol of his goodwill. ”

In First National Telecom Services Limited v. Richard Gibbs, WIPO Case No. D2004-0363, the panelist stated that “The Complainant who can establish that he has a goodwill and reputation in a mark protectable by way of passing off action has ‘rights’ in the trademark or service mark in question for the purposes of paragraph 4(a) of the Policy”. The panel further added that “to succeed in an action for passing off, the Complainant would have to show that it had acquired a substantial goodwill and reputation in the mark FNTELE such that the mark was distinctive of its goods and services, that the use by the Respondent of the domain name <fntele.net> and <fntele.info> amounted to a misrepresentation that his goods or services or his business was that of the Complainant or that they were connected with the Complainant and that such a misrepresentation was likely to lead to damage. The Complainant has to show that it had acquired the requisite goodwill and reputation at the date the Respondent registered the domain names. ”

Under UK law, passing off actions are not limited to misrepresentation of a sign used as a trademark in the strict sense of the term, i.e. an identifier affixed on a good, or under which a specific service is offered. Indeed, as mentioned by the panel in Countryside Alliance Limited v. Ian Mac, Unfinished Business, WIPO Case No. D2001-0861, “English courts have held passing off actions to lie to protect the reputation associated with the name of professional associations, charitable bodies and servicemen’s clubs, particularly when, as today, they engage in merchandising or other transactions at least in some secondary degree (…). What the Complainant must show is that the name or sign in question is well recognised as the means for distinguishing it as an organization from others of similar character; and that the public must be likely to be misled into thinking that the name or sign used by the Respondent refers to the Complainant rather than to others. It must moreover be likely that the consequences will be detrimental to the Complainant”.

This being said, the Panel must verify whether the evidence filed by the Complainant satisfies the threshold mentioned above, bearing in mind that the unregistered rights over the expression ASSOCIATED BRITISH FOODS are claimed in connection with goods belonging to international classes 1, 5, 29, 30, 31 and 32.

What appropriate evidence should be filed by the Complainant when relying on an unregistered right? The different views expressed in UDRP decisions on this issue were summarized in WIPO’s Overview of WIPO Panel Views on Selected UDRP Questions: in order to successfully assert common-law or unregistered trademark rights, “the complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition”.

The Complainant’s representative annexed to its Complaint an extract taken from the Official Website of the Complainant.

This website mentions in particular that Associated British Foods plc is “an international food, ingredients and retail group with annual sales of (GBP) 5.2 billion and over 35,000 employees. The group is one of Europe’s largest food companies with a wide range of successful brands and products in the food sector, and an increasingly strong presence in advanced research and technology, where (it) is turning natural products into innovative ingredients for the food, personal care and pharmaceutical industries. A significant supplier of branded and non-branded grocery products and a leading textile retailer, (it has) significant business in Europe, Australasia and the United States. ”

The Complainant rigthly points out that misrepresentation of a business identifier, including a trade name or a company name, may amount to passing off under UK law.

However, in order to establish a convincing case of passing off attention must be paid to the reputation attached to the plaintiff’s business identifier.

In order to obtain complementary information in this respect, the Panel issued procedural order No. 1 requesting the Complainant “to submit to the Center (…) evidence supporting the said use.”

In response to this order, the Complainant’s representative argued, in substance, that goodwill of Complainant’s mark had been duly evidenced in the Complaint: “The mark ASSOCIATED BRITISH FOODS is well known and has been used for a number of years and is an attractive force which brings in business for the Complainant. The name invokes in customers a sense of the quality of goods and services offered under the name which has enabled the company to survive for 45 years in all the various areas of interest to it.”

The Panel has seriously reviewed the evidence submitted by Associated British Foods, consisting of various extracts of its website. These extracts expressly mention that Associated British Foods is a group incorporated in 1934 with an annual sales of 5.2 billion and over 35.000 employees. It is also asserted by the Complainant that Associated British Foods is one of the largest food group operating in most of the world’s main food markets. The Complainant is a major operator in the grocery andthe agriculture industry, and produces functional ingredients widely used in the foods industry, and in retail.

Although it would have been preferable that the Complaint contained complementary evidence originating from external sources, the Panel considers that the above assertions of the Complainant constitute prima facie evidence of the common-law rights owned by the Complainant on the trademark ASSOCIATED BRITISH FOODS for the products and services belonging to international classes 1, 5, 29, 30, 42. Indeed, the accuracy of the Complainant’s assertions, and of the evidence filed, has not been debated by the Respondent.

Comparison of signs

The contested domain name < associatedbritishfoods.com > is obviously strictly identical to the Complainant’s trademark. The top level domain “.com” is irrelevant for the purpose of the comparison.

B. Rights or Legitimate Interests

Once the Complainant asserts that the Respondent has no rights or legitimate interest in the disputed domain name, which it has done, the onus is then on the Respondent to establish that it has indeed rights or legitimate interest.

The Respondent did not respond to the Complaint, and the Panel, based on the case file, concludes that the Respondent does not have rights or legitimate interests in the contested domain name.

C. Registered and Used in Bad Faith

In accordance with paragraph 4(b) of the Policy, the following circumstances may constitute evidence of the registration and use of a domain name in bad faith:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

The Panel is convinced that the contested domain name was registered primarily to prevent the Complainant from reflecting its trademark in the corresponding domain name, secondly to create a likelihood of confusion, and subsidiarily for the purpose of selling it to the Complainant.

Concerning the first point, is the registration of a single domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, sufficient to conclude to the bad faith of the Respondent? Indeed, paragraph 4(b)(ii) states that this conduct amounts to bad faith “provided that (the Respondent has) engaged in a pattern of such conduct”. The Complaint does not mention whether the Respondent has registered other domain names constituted of third parties’ trademark rights, and the Panel is not aware of UDRP decisions involving Domain Admin as a respondent. Accordingly, it is not established that the Respondent has engaged in the pattern of registering third parties’ trademarks as domain names.

Some panels have given much weight to the “pattern of conduct” when considering the existence of bad faith. In Efferms AG v. Weitner AG, WIPO Case No. D2000-1433, the Panel mentioned that “Respondent registered at least three domain names identical to protected trademarks of third parties. The Panelist considers that this number is sufficient to find that respondent engaged into a pattern of preventing trademark owners from reflecting their mark into a corresponding domain name.”

However, this Panel is not convinced that the “pattern of conduct” is a necessary condition to conclude to the existence of bad faith. The registration of a single domain name in order to prevent a third party to reflect its trademark in the corresponding domain is, in itself, reprehensible. In this respect, the Panel conceives no reason for the Respondent to adopt or to use the contested domain name.

Concerning the second point, the disclaimer which appears on the website “www.associatedbritishfoods.com” confirms that the Respondent has intended to create a likelihood of confusion, as it is perfectly aware that anyone entering a website “www.associatedbritishfoods.com” would expect to reach an official website if the Complainant. Indeed, the disclaimer mentions that “if you have arrived here accidentally and are looking for a service other than www.associatedbritishfoods.com CDs, please use Google to search for it. We are not connected with any other service, so please do not use this site unless you were looking for www.associatedbritishfoods.com CDs.”

Concerning the last point, the Complainant has duly established that one of its employees was contacted by someone acting presumably on behalf of the Respondent, to make an offer to transfer the contested domain name. It is true that the employee of the Complainant does not remember the amount of money which was requested for said transfer, but the proposal made by the Respondent confirms that the contested domain name was registered in bad faith.

It is therefore concluded that the contested domain name was registered, and is being use, in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <associatedbritishfoods.com> be transferred to the Complainant.

Martine Dehaut
Sole Panelist

Dated: June 23, 2005