None of your bee's wraps

Background

The Complainant, Bees Wraps LLC, was a United States company founded in 2012, engaged in the manufacture of sustainable products with a view to reducing plastic waste.  The Complainant's products included food wrappers, cloths for wrapping food, drying racks and wax-treated cloth for food, referred to as "bees wraps".  The Complainant's products were sold at retailers throughout the world, as well as online.  For use in connection with the Complainant's bee's wraps products, the Complainant had registered several BEE'S WRAP trademarks, including in the European Union, the United States and in Switzerland, the earliest of which dated from 2013.  The Complainant also owned the domain name <beeswrap.com>. 

While the disputed domain name was registered in the name of "Herbert Widmer", the Respondent claimed that the disputed domain name was registered on behalf of a Swiss company called "Nuts Innovations AG".  The Respondent was also engaged in the sale of bee's wax-coated cloth products, as well as a range of other similar products. 

The disputed domain name was registered on 9 February 2019.  It was being used to redirect to the Respondent's German-language website at "www.nutsinnovations.shop", where its food storage products were offered for sale. 

The Complainant asserted rights in the BEE'S WRAP trademark, and submitted that the disputed domain name was confusingly similar to the Complainant's mark.  The Complainant submitted that the Respondent had no rights or legitimate interests in the disputed domain name, and that the Respondent's intent was to trade off the goodwill of the Complainant's BEE'S WRAP trademark by selling similar but inferior products on the site linked to the disputed domain name, in an attempt to confuse consumers into thinking that they were buying genuine products from the Complainant.  The Complainant further submitted that the Respondent was intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's BEE'S WRAP trade mark to falsely create the impression that the Complainant's goods were being offered at a substantial discount.

The Respondent argued that the Complainant's trademarks did not confer on the Complainant the exclusive right to use the commonly used expression "bee's wrap", and that the Complainant's trademarks lacked distinctiveness.  The Respondent asserted that the disputed domain name was being used in connection with a bona fide offering of goods, and that it was entitled to use the disputed domain name being composed of generic words that were descriptive of the Respondent's products.  The Respondent denied having registered or used the disputed domain name in bad faith, noting that a number of other vendors on the market also sell bee's wax-impregnated cloths, and that the Respondent had no intention of creating a likelihood of confusion with the Complainant's products.  The Respondent further claimed that the Respondent's products differed substantially from those of the Complainant. 

To be successful under the UDRP, a complainant must satisfy the requirements of paragraph 4(a) of the UDRP:

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

(ii) the respondent has no rights or legitimate interests in the disputed domain name;  and

(iii) the disputed domain name was registered and is being used in bad faith. 

Identity / similarity

Under paragraph 4(a)(i) of the UDRP, the Panel found that the Complainant had established rights in the BEE'S WRAP trademark, and that the disputed domain name was confusingly similar to the Complainant's trademark in that it simply added an "s" to the second of the two words which comprised the Complainant's trademark.

Rights / legitimate interests

Under paragraph 4(a)(ii) of the UDRP, the Panel identified the core issue as whether the Respondent had inappropriately targeted the Complainant.  The Panel noted that the Respondent did appear to operate a company making a genuine offering of bee's wax-impregnated cloths, but that these goods were similar to and indeed competing with the Complainant's products.  In considering whether the Respondent's business conferred rights or legitimate interests in the disputed domain name on the Respondent based on descriptive meaning that could be ascribed to the disputed domain name, the Panel noted that the Respondent's business was called "Nut Innovations AG" and not "Bee's Wraps", and that the third-party uses of the term "bees wraps" referred to by the Respondent were inconclusive in supporting the Respondent's claim that the term "bees wraps" (as opposed to "beeswax wraps") was generic or had a descriptive meaning separate from referring to the Complainant's trade mark.  The Panel stated that the Complainant's trade mark could at best be described as "descriptive" or "suggestive".  In weighing the above factors, the Panel described the case as a "close call", but on balance found that the Complainant had satisfied the requirements of the second element of the UDRP.

Bad faith

Under paragraph 4(a)(iii) of the UDRP, the Panel once more weighed the evidence, and determined that the Complainant had failed to establish that the disputed domain name was registered in bad faith.  Noting the descriptive or suggestive nature of the Complainant's trademark, the Panel noted that stronger evidence of the Respondent's intent and knowledge of the Complainant's trademark would be required than in other UDRP proceedings.  The Respondent had denied having knowledge of the Complainant's trademark, and the Complainant's evidence fell short of proving that the Complainant's trademark had acquired distinctiveness and a degree of public recognition such that it could be presumed that the Respondent had targeted the Complainant and its trademark.  The Panel noted that while the UDRP was intended to provide an international and uniform policy for resolving disputes between trademark owners and domain name registrants, local laws as to cybersquatting and trademark infringement were different in several respects, and could lead to a different outcome than that under the UDRP.  In this regard, the Complainant was not prevented from pursuing its claims in the courts, which would have allowed for a fuller examination of the relevant facts and circumstances. 

Again, the Panel considered this case to be a "close call", but ultimately found that the Complainant had failed to satisfy the requirements under the third element of the UDRP.

Comment

The above case presents a scenario where a highly similar domain name was being used to redirect to a website selling goods in competition with those of the Complainant.  The Complainant had provided evidence of its prior trademark rights, which were enforceable in the Respondent's location.  And yet, the case resulted in a denial.  As noted by the Panel, where a trademark may be composed of descriptive terms, there is a greater onus on a complainant to present evidence of acquired distinctiveness.  While in the present case the Panel did not go so far as to make a positive finding that the Respondent had rights or legitimate interests in the disputed domain name resulting from having used the disputed domain name in connection with its descriptive meaning, the Complaint was nevertheless unable to prove that by registering the disputed domain name the Respondent had sought to target the Complainant's trademark – a case falling at the limit of the UDRP, where an alternative outcome in a court of competent jurisdiction may well be possible.

Authored by Anchovy News Team