A UDRP case involving 3 domain names, had a unique outcome: One of the domains was ordered to be transferred to the Complainant, Vance’s Foods, Inc., while the other two remain with the Respondent.
But that’s not the unique part!
For the latter two, the panel delivered a finding of Reverse Domain Name Hijacking, as they involved the term “darifree” that can not be claimed as a trademark.
Said the panelist:
It is incontrovertible that Complainant lacks trademark rights in the term “darifree” standing alone. Not only is “darifree” generic for products that are free of dairy, but also, the USPTO expressly so held when it required Complainant to disclaim “darifree” from its VANCES DAIRFREE trademark. Without trademark rights, there can be no possible claim under the UDRP. These facts alone would, therefore, support a finding of RDNH.
Complainant’s counsel should have recognized that Complainant had no rights to the DARIFREE mark, and thus no valid claim under the UDRP.
Final decision: Transfer VancesFoods.com to the Complainant. Deny transfer of the domains darifree.info and darifreemilk.com to the Complainant, while finding them guilty of Reverse Domain Name Hijacking for that portion of the UDRP.
Vance’s Foods, Inc. v. Whois Privacy, Private By Design, LLC / Samantha Shail and Shail Shail / Dan “DJ” Shail
Case No. D2021-05141. The Parties
Complainant is Vance’s Foods, Inc., United States of America (“United States”), represented by The Burton Law Firm, United States.
Respondents named in the Complaint and Amended Complaint are Whois Privacy, Private By Design, LLC, United States / Samantha Shail, United States, and Shail Shail, United States, internally-represented. As explained below, the Panel treats Dan “DJ” Shail as an additional respondent; he appears pro se.
2. The Domain Names and Registrar
The disputed domain names <darifree.info>, <darifreemilk.com>, and <vancesfoods.com> are registered with Porkbun LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 18, 2021. On February 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 23, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 24, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an Amended Complaint on February 28, 2021.
The Center verified that the Complaint, together with the Amended 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 21, 2021. Dan Shail filed a Response on March 21, 2021.
The Center received an email communication from Complainant on March 23, 2021 stating, in relevant part: “Initial review of the Response indicates its claims are significantly factually incorrect and highly irrelevant. We suspect the panel will be able to make the same factual conclusion themself; however, for avoidance of doubt, may we be issued forty-eight hours to share and discuss the Response with our client and decide if a Reply is warranted?”
Also on March 23, 2021, the Center received an unsolicited supplemental filing from Respondent.
Further to Complainant’s March 23, 2021 email, on March 26, 2021, the Center received an unsolicited supplemental filing from Complainant in response to Respondent’s filings. On March 29, 2021, the Center received an unsolicited supplemental filing from Respondent in response to Complainant’s supplemental filing.
The Center appointed David H. Bernstein as the sole panelist in this matter on March 26, 2021. 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
Complainant is Vance’s Foods, Inc., an Alaska corporation that began providing dairy-free milk products in 1994 under the VANCE’S FOODS, INC. trademark. Complainant owns U.S. Trademark Registration No. 2,729,554 for VANCE’S FOODS, INC. for “potato based and soy based food beverage used as a milk substitute.” The trademark was registered on June 24, 2003, and Complainant filed a declaration of incontestability for the trademark based on more than five years of its uncontested use.
Complainant also owns U.S. Trademark Registration No. 3,162,350 for VANCE’S DARIFREE for “vegetable-based food beverages.” This trademark was registered on October 24, 2006, and Complainant filed a declaration of incontestability for the trademark based on more than five years of its uncontested use. Complainant registered the same trademark with the Canadian Intellectual Property Office (No. TMA 620016) for “non-alcoholic, non-carbonated, non-dairy, potato-based powered dry mix and liquid milk-alternative beverages in original, chocolate, and fortified formats.”
Although Complainant did not note this fact in its Complaint, its registrations for VANCE’S DARIFREE include a disclaimer stating that Complainant is not claiming the exclusive right to use “darifree” apart from the mark as shown. The U.S. registration further disclaims any exclusive rights in the phonetic equivalent, “dairy-free”.
Respondent as named in the Amended Complaint is Samantha Shail and Shail Shail. Respondent is connected to Dan Shail and Lonna Shail (“the Shails”) with whom Complainant had a prior business relationship. Complainant alleges that the Shails worked as contractors for Complainant for over ten years and that this business relationship ended in 2019; Respondent characterizes the relationship as “B2B,” suggesting that he was not a contractor for Complainant but simply purchased products from Complainant for resale. In any event, Respondent agrees that the Shails no longer have a business relationship with Complainant.
Respondent has registered three disputed domain names. The disputed domain name <vancesfoods.com> was created on November 22, 1999. It appears that this domain name was created and used by Complainant prior to Respondent’s recent renewal of the domain name; the Panel’s review of selected historical images of the “www.vancesfoods.com” website from 2002 through 2017 shows that the website was used to promote Complainant and its VANCE’S DARIFREE products (see, e.g., https://web.archive.org/web/20020802004333/http://vancesfoods.com/main.asp?p=home, https://web.archive.org/web/20170917000337/http://vancesfoods.com/). Complainant alleges that Dan Shail “wrongfully renewed registration” of this domain name.At the time of the filing of the Complaint and the Amended Complaint, the disputed domain name resolved to a website that contained links promoting “FiberSweet” and “DariFree” products. Based on the Panel’s review of selected historical images of the “www.vancesfoods.com” website, it appears that the domain name resolved to this new website starting in about 2020 (e.g., https://web.archive.org/web/20200111034409/http://www.vancesfoods.com/). 1
The disputed domain name <darifree.info> was created on May 10, 2006. According to the Registrar, Respondent transferred the disputed domain name to the Registrar in April 2020. The record does not reveal who owned the disputed domain name prior to April 2020 (though the Panel has ascertained, via the Internet Archive, that the “www.dairyfree.info” website advertised unrelated vegan chocolates in 2007 and 2008, which suggests that Respondent obtained this domain name from a third party). At the time of the filing of the Complaint and the Amended Complaint, the disputed domain name resolved to a website that advertised “DariFree SugarFree Veggie Milks” made by a company other than Complainant.
The disputed domain name <darifreemilk.com> was created on May 21, 2009. According to the Registrar, Respondent transferred the domain name to the Registrar in May 2020. The record does not reveal who owned the <dairifreemilk.com> disputed domain name prior to May 2020 (though the Panel has ascertained, via the Internet Archive, that the “www.darifreemilk.com” website advertised Complainant’s products from 2013-2018, which suggests that the domain name was owned by Complainant and that Respondent has since renewed the domain name in his own name). At the time of the filing of the Complaint and the Amended Complaint, the disputed domain name resolved to a website that advertised “DariFree SugarFree Veggie Milks” made by a company other than Complainant.
5. Parties’ Contentions
A. Complainant
In addition to its ownership of the United States and Canadian registrations discussed above, Complainant claims common law trademark rights in the mark DARIFREE, “with its unique spelling, by way of public recognition and association with Complainant’s products achieved through the exclusive use of these marks with its products for the past twenty years.”
Complainant alleges that Respondent’s use of the disputed domain name <vancesfoods.com> is confusingly similar to Complainant’s registered trademark VANCE’S FOOD, INC. Complainant further alleges that Respondent is infringing on its registered trademark VANCE’S DARIFREE and its common law trademark rights in DARIFREE through its registration and use of the disputed domain names <darifree.info> and <darifreemilk.com>.
Complainant asserts that Respondent lacks rights or legitimate interests in the disputed domain names. Complainant ended its business relationship with Respondent in 2019; as a result, Respondent is not authorized to use Complainant’s trademarks. Furthermore, Complainant alleges that Respondent has its own business that sells products in competition with those of Complainant, and that Respondent uses the disputed domain names to “confuse consumers and cause them to believe that they are visiting a website that is operated by or affiliated with” Complainant.
In support of these claims, Complainant provides evidence that Respondent uses the disputed domain names as a “gateway” to https://gcstore.ecwid.com, where Respondent sells competing products. Complainant also alleges that Respondent has used images from Complainant’s advertisements to promote its own products, and that Respondent has improperly used a trademark designation when advertising its “DariFree” products.
Complainant asserts that Respondent registered and is using the disputed domain names “primarily for the wrongful purpose of disrupting the business of Complainant and misleading consumers for the commercial gain of the individuals who have illicitly registered these domain names.” Complainant reiterates that the disputed domain names direct visitors to a website where Respondent advertises plant-based creamers, milks, and yogurt drinks that compete with the goods covered by Complainant’s registered trademarks. Complainant further assets that Respondent’s use of Complainant’s former business address and a false name, “Shail Shail,” to register the disputed domain name <darifree.info> demonstrates bad faith.
B. Respondent
Respondent alleges that Complainant is no longer in business and no longer produces products under the VANCE’S DARIFREE trademark. In a supplemental filing received shortly after filing its initial Response, Respondent adds that Complainant has engaged in deception by failing to disclose that it offered to purchase the disputed domain names and “other IP” from Respondent.
Respondent further alleges that Complainant has falsely represented its ownership of the DARIFREE trademark. Respondent emphasizes that “both the Canadian and United States Government have made clear to Vances [sic] Foods Inc. they have ‘NO RIGHT’ to Claim ‘DARIFREE’.” Respondent asserts that Complainant has acknowledged this limit on its trademark rights, and Respondent lists other companies that have used the term “darifree”, including BOBS DARIFREE and WHYTES DARIFREE. To support these claims, Respondent provides images of the logo for WHYTES DARIFREE.
Respondent asserts that Complainant does not have legitimate interests in <darifree.info> because Complainant never owned <darifree.info> or <darifree.com>. Respondent further asserts that <darifree.com> “belongs to the company that developed and produced ‘WHTYES DARIFREE’ an actual competitor of [Complainant].”
Furthermore, Respondent claims to have never promoted or sold Complainant’s products. In a supplemental filing, it asserts that the <vancesfoods.com> domain name is only used “to maintain support of DariFree™ and FiberSweet® not sales or promotion.” Respondent emphasizes that it has “overhauled” the “DariFree™ brand,” and it offers products that are distinct from those of Complainant.
Finally, Respondent denies Complainant’s assertion that it copied images from Complainant’s marketing materials. Instead, it alleges that the images of Complainant’s marketing materials used in the Complaint are, in fact, not from Complainant’s marketing materials and that some of the images are owned by Respondent. It also alleges that Complainant has engaged in a pattern of improperly using Respondent’s images. In support of this claim, Respondent provides images of products allegedly sold by Vance’s Food, Inc.
6. Procedural Rulings
1. Identity of Respondent
WIPO Overview 3.0, section 4.4.5, provides the Panel with the discretion to determine the respondent against whom a UDRP proceeding should proceed. In this matter, Complainant persuasively argues that the Shails are the beneficial owners of the disputed domain names, which they arranged to be registered in the name of their daughter. Moreover, the Response in this case was filed by Mr. Shail. The Panel thus concludes that it is appropriate to treat Mr. Dan “DJ” Shail as an additional respondent, in this case, along with the registrants Samantha Shail and Shail Shail.
2. Respondent’s First Supplemental Submission
Respondent filed its Response on March 21, 2021. As noted above, Respondent filed an unsolicited supplemental submission two days later, on March 23, 2021. Unsolicited supplemental filings are generally discouraged. See WIPO Overview 3.0, section 4.6. As the WIPO Overview 3.0 explains, “an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response.” Id.
Although the Panel normally would not accept supplemental submissions that are filed without a showing of good faith, the Panel will accept this supplemental submission. First, the Panel notes that Respondent is not represented by legal counsel; the Panel believes it appropriate to apply the Rules with a bit of flexibility when dealing with pro se Respondents. Second, the supplemental submission (which contained information about Complainant’s attempt to purchase Respondent’s domain names) was filed shortly after the deadline for the Response, and therefore did not delay these proceedings or prejudice Complainant. For these reasons, the Panel will accept Respondent’s March 23, 2021 supplemental submission.
3. Complainant’s Supplemental Submission and Respondent’s Second Supplemental Submission
On March 26, 2021, Complainant filed an unsolicited supplemental submission in response to Respondent’s filings. This supplemental filing is largely a response to Respondent’s filings. To the extent the supplemental submission contains new information, that is information Complainant could and should have anticipated in its Complaint. As this Panel explained in Tiara Hotels & Resorts LLC v. John Pepin, WIPO Case No. D2009-0041:
“the Policy and the Rules demonstrate a strong preference for single submissions – that is, the Complaint and the Response. Parfums Christian Dior S.A. v. Jadore, WIPO Case No. D2000-0938; Plaza Operating Partners, Ltd. v. Pop Data Technologies, Inc. and Joseph Pillus, WIPO Case No. D2000-0166. Although panels do, on occasion, request supplemental submissions pursuant to paragraph 12 of the Rules, (e.g., Pacific Fence & Wire Co. v. Pacific Fence and Jim Paradise, WIPO Case No. D2001-0237), most panels have held that additional submissions are inappropriate except in the rarest of circumstances, such as discovery of new evidence, issuance of new statutes or case decisions, or arguments by the respondent that the complainant could not reasonably have anticipated. Id.; Parfums Christian Dior S.A., supra; Plaza Operating Partners, Ltd., supra; Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; UNIVERSAL CITY STUDIOS, INC. v. G.A.B. ENTERPRISES, WIPO Case No. D2000-0416; Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. Even then, if the new material is unlikely to have any effect on the outcome of the proceeding, allowing supplemental submissions will serve only to increase the cost and delay of the proceeding, with no commensurate benefit to the parties.”
Because Complainant’s supplemental submission did not meet any of these standards, the Panel has decided to disregard the Complainant’s March 26, 2021 supplemental submission. Because the Panel has declined to consider Complainant’s supplemental submission, the Panel also declines to consider Respondent’s responsive supplemental submission. Id. 2
7. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements that Complainant must prove by a preponderance of the evidence in order to obtain transfer of the disputed domain names:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Disputed Domain Name <vancesfoods.com>
1. Identical or Confusingly Similar
Complainant has demonstrated that it has trademark rights in the VANCE’S FOODS, INC. mark by virtue of its incontestable United States registration. That registration is conclusive evidence of the validity of the mark and of Complainant’s ownership thereof. 15 U.S.C. § 1115(b).
Respondent asserts that the registration is invalid because Complainant has ceased operations and no longer sells products under the VANCE’S FOODS, INC. mark. This is essentially an argument that Complainant has abandoned its rights in the VANCE’S FOODS, INC. trademark registration. Abandonment is a defense to an incontestable trademark registration. See 15 U.S.C. § 1115(b)(2). A mark will be deemed abandoned under United States trademark law “[w]hen its use has been discontinued with intent not to resume such use.” 15 U.S.C. § 1127. Although intent to not to resume use of a mark may be inferred from the circumstances, there must be “clear and convincing” evidence that Complainant intends to abandon its registered mark. See New Whey Nutrition, LLC v. Duffy Holdings LLC, WIPO Case No. D2010-1710.
Respondent has not adduced such clear and convincing evidence in this case. Although Respondent argues that Complainant has ceased operations, Respondent also acknowledges that Complainant is seeking to sell its business and intellectual property rights. A mark is not abandoned if the owner has temporarily discontinued sales while seeking purchasers for the business. SeeTMEP § 1613.11 (“Temporary nonuse due to the sale of a business may be considered excusable.”). Respondent’s argument (which is unsupported with any evidence) does not establish that Complainant has discontinued use of the mark with the intent to abandon; to the contrary, the fact that Complainant has filed this Complainant supports an inference that Complainant does not intend to discontinue use of this mark.
For these reasons, the Panel finds that Complainant satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. WIPO Overview 3.0, section 1.2.1.
The disputed domain name, <vancesfoods.com>, is confusingly similar to Complainant’s VANCE’S FOODS, INC. mark given that the dominant “VANCE’S FOOD” portion of the mark is copied in the domain name (absent the apostrophe, which cannot be represented in a domain name). As WIPO Overview 3.0 explains, “where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” WIPO Overview 3.0, section 1.7.
The Panel therefore concludes that Complainant has satisfied the first element of the Policy as to the <vancesfoods.com> domain name.
2. Rights or Legitimate Interests
The second element requires Complainant to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production then shifts to Respondent to demonstrate that it does have rights or legitimate interests in the disputed domain name. WIPO Overview 3.0, section 2.1.
Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the <vancesfoods.com> domain name. Complainant alleges that Respondent “wrongfully renewed registration” of the disputed domain name. Whatever the parties’ relationship may have been in the past, there is no dispute that Respondent no longer has a business relationship with Complainant, and Complainant has not authorized Respondent to distribute its products or use any of its trademarks.
Respondent has not provided any evidence to rebut Complainant’s prima facie showing. Respondent claims to have never sold or promoted Complainant’s products, but that does nothing to explain why Respondent believes it has a legitimate interest in this disputed domain name. Respondent further argues that it only uses the <vancesfoods.com> domain to support its own products lines, “DariFree” and “FiberSweet.” However, these claims only demonstrate that Respondent has not been commonly known by the disputed domain name and is not using the domain name in connection with a bona fide offering of goods or services related to the VANCE’S FOODS, INC. trademark. Furthermore, there is nothing on Respondent’s website that could support a finding that Respondent is making a legitimate noncommercial use or fair use of the disputed domain name. See WIPO Overview 3.0, section 2.1 (listing non-exclusive respondent defenses).
The Panel reaches this conclusion without considering Complainant’s allegations that the website used by Respondent to sell its competing goods has used nearly identical images to that of Complainant’s advertisements, or the Respondent’s response that Complainant used different images than those referenced in the Complaint. The record is not clear on exactly what images were used; in any event, resolution of this part of the dispute would not impact the Panel’s finding that Complainant has shown, by a preponderance of the evidence, that Respondent lacks rights or legitimate interests in this disputed domain name.
The Panel therefore concludes that Complainant has satisfied the second element of the Policy as to the <vancesfoods.com> domain name.
3. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, are evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on the respondent’s website or location.
Complainant has asserted sufficient allegations to prove that Respondent registered and used the disputed domain name <vancesfoods.com> in bad faith. Specifically, it has shown that Respondent is using the disputed domain name for the purpose of disrupting the business of Complainant and attracting, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark.
Complainant asserts that, at the time of its Complaint and its Amended Complaint, Respondents’ website, “www.vancesfoods.com”, “direct[ed] customers through a series of links to a website, https://gcstore.ecwid.com, that is owned and operated by the [Respondent].” This linked website sells plant-based creamers, milk and yogurt drinks that directly compete with the products covered by Complainant’s VANCE’S FOODS, INC. trademark. Furthermore, Complainant provided evidence that Respondent runs this other website, and Respondent did not dispute this allegation.
WIPO Overview 3.0, section 3.1.4, provides that panels may take into account particular circumstances when assessing bad faith, including “a clear absence of rights or legitimate interests coupled with no credible explanation for the respondent’s choice of the domain name.” Here, Respondent clearly lacks a legitimate interest in the disputed domain name, and it has failed to provide a credible explanation for using the <vancesfoods.com> domain name to promote its own products.
Further, although the record is not clear with respect to how Respondent acquired the disputed domain name, Respondent clearly obtained control of the disputed domain name without Complainant’s authorization. Notably, Respondent does not refute Complainant’s allegation that Respondent wrongfully renewed the disputed domain name in the name of a Respondent without Complainant’s authorization. Respondent’s acquisition of the disputed domain name in this way constitutes bad faith registration.
The Panel therefore concludes that Complainant has satisfied the third element of the Policy as to the <vancesfoods.com> domain name.
B. Disputed Domain Names <darifree.info> and <darifreemilk.com>
1. Identical or Confusingly Similar
Paragraph 4(a) of the Policy requires Complainant to prove that a disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Complainant has failed to demonstrate that it has rights in any mark that would be confusingly similar to the disputed domain names <darifree.info> and <darifreemilk.com>.
Although Complainant owns trademark registrations for VANCE’S DARIFREE, it has disclaimed any right to use “darifree” (and, in the case of one registration, its phonetic equivalent, “dairy-free”) apart from the mark as shown. As WIPO Overview 3.0 makes clear, “if the similar elements of the domain name are made up exclusively of disclaimed terms, trademark rights under the Policy may not be found unless the complainant can show [common law trademark rights] in the disclaimed terms.” WIPO Overview 3.0, section 1.2.3.
Complainant cannot establish common law trademark rights in the term “darifree.” Although Complainant did not disclose this fact in its Complaint, the Panel’s review of the records of the United States Patent and Trademark Office (“USPTO”) reveals that the USPTO rejected Complainant’s application to register DARIFREE as a trademark (Serial No. 78/776,248) on the ground that “[t]he applied-for mark is generic and incapable of serving as a source-identifier for applicant’s goods.” 3 Because “darifree” is the phonetic equivalent of a generic term for products that are free of dairy (i.e., “dairy free”), Complainant cannot claim trademark rights in that term.
The Panel therefore concludes that Complainant has not satisfied the first element of the Policy as to the <darifree.info> and the <darifreemilk.com> disputed domain names.
Because Complainant has failed to meet the threshold requirement of having trademark rights, and because Complainant must prevail on all three elements to prevail against these domain names, consideration of the other factors and the other allegations related to these two domain names is unnecessary. WIPO Overview 3.0, section 4.1. To the extent Respondent wrongfully expropriated Complainant’s <dairyfreemillk.com> domain name, any such claim would need to be brought in a different forum as it is beyond the scope of the Policy.
2. Reverse Domain Name Hijacking
Under the Rules, the Panel is tasked with considering whether Complainant is guilty of Reverse Domain Name Hijacking (“RDNH”). That is true notwithstanding that Respondent has not requested such a finding. WIPO Overview 3.0, section 4.16. The Rules specifically put the burden on the Panel to determine whether a complainant has tried to use “the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.” Rules, paragraphs 1 and 15(e).
It is incontrovertible that Complainant lacks trademark rights in the term “darifree” standing alone. Not only is “darifree” generic for products that are free of dairy, but also, the USPTO expressly so held when it required Complainant to disclaim “darifree” from its VANCES DAIRFREE trademark. Without trademark rights, there can be no possible claim under the UDRP. These facts alone would, therefore, support a finding of RDNH. See generally Rodale, Inc. v. Cambridge, WIPO Case No. DBIZ2002-00153.
Complainant failed to disclose these materials facts in the text of its Complaint. See Goway Travel Limited v. Tourism Australia, WIPO Case No. D2006-0344. That is deceptive conduct towards that Panel that further supports a finding of RDNH. These omissions are particularly egregious given that Complainant is represented by counsel. See WIPO Overview 3.0, section 4.16 (noting, “some panels have held that a represented complainant should be held to a higher standard”). Complainant’s counsel should have recognized that Complainant had no rights to the DARIFREE mark, and thus no valid claim under the UDRP.
Accordingly, the Panel finds that the Complaint was filed, in part, in a bad faith attempt to deprive the Respondent of these two domain names. WIPO Overview 3.0, section 4.16. Although Respondent may well have acted in bad faith in its acquisition of one of these names (if Respondent did expropriate it from Complainant), that misconduct is better suited for a court to address and does not excuse Complainant’s misuse of the Policy. Furthermore, although the Panel has upheld part of Complainant’s Complaint (as to one disputed domain name), this does not prevent it from finding RDNH as to the other disputed domain names.
8. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <vancesfoods.com> be transferred to Complainant.
The Panel denies the Complaint as to domain names <darifree.info> and <darifreemilk.com>.
David H. Bernstein
Sole Panelist
Date: April 10, 20211 As the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), provides at section 4.8, “a panel may undertake limited factual research into matters of public record if it would consider such information useful in assessing the case merits and reaching a decision, including “consulting historical resources such as the Internet Archive (www.archive.org) in order to obtain an indication of how a domain name may have been used in the relevant past.”
2 Had the Panel considered these submissions, it would not have changed the outcome in this proceeding.
3 As the WIPO Overview 3.0 provides at section 4.8, “a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision,” including “accessing trademark registration databases.”
