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Posts Tagged ‘Without Prejudice’

Domain Dispute With 5 Complainants and 25 Domains DENIED on Procedural Grounds

Wednesday, January 5th, 2011

In the recent cybersquatting case of Grupo Bimbo S.A.B. de C.V., Bimbo Hungria ZRT., Arnold Products, Inc., Orograin Bakeries Products, Inc., Bimbo Bakeries USA, Inc. v. John Paulsen (WIPO Case No. D2010-1647, December 3, 2010) a single member Panel was faced with an interesting dispute brought by five (5) different Complainants seeking the transfer of 25 domains.

The domains at issues included <aboutgrupobimbo.com>, <arnoldfillems.com>, <bagelthin.com>, <bagelthins.com>, <bimbobrands.com>, <bimbobreads.com>, <bobolipizza.com>, <bobolipizzacrust.com>, <bobolisauce.com>, <brownberrybreads.com>, <brownberryjr.com>, <coronadocandy.com>, <entenmannscakes.com>, <entenmannscookies.com>, <entenmannsdonuts.com>, <fillems.com>, <franciscobreads.com>, <freihofersbread.com>, <laracookies.com>, <oldcountrybreads.com>, <oroweatbread.com>, <sandwichthin.com>, <stroehmannbread.com>, <tiarosatortilla.com> and <tiarosatortillas.com>.

The Panel explained that Grupo Bimbo is a large and internationally known baking company. and that the other Complainants appeared to be subsidiaries. Each of the Complainants individually owned trademark registrations and rights in one or more trademarks. The marks being claimed included GRUPO BIMBO, BIMBO, TIA ROSA, CORONADO, LARA, SANDWICH THINS, BROWNBERRY, FILL `EMS, BOBOLI, ENTENMANN’S, FREIHOFER’S, STROEHMANN, FRANCISCO, OLD COUNTRY, and OROWEAT.

Respondent filed a response which did not address the merits of the case, but the Panel explained that Respondent instead asserts that the process provided for under the UDRP is corrupt and inherently unfair in that “it favors the haves and unfairly penalizes and punishes the have nots”. The Respondent states that he does not recognize “the authority of WIPO or any other would be ‘World Policing Organization’”, and that he is certain his domain names “will be stolen” by the Complainants and their attorneys.

The remainder of the decision focused on the singular procedural issue of whether or not multiple complainants in this case was appropriate. The Panel explained:

The Policy and the Rules do not expressly contemplate the consolidation of multiple complainants (or respondents) in a unitary administrative proceeding, and generally speak in singular terms of a “complainant” when referring to proceedings under the Policy. This Panel, along with a number of WIPO Panels, nonetheless has concluded that the use of the singular “complainant” in the Policy and Rules was not meant to preclude multiple legal persons in appropriate circumstances from jointly seeking relief in a single administrative proceeding under the Policy.

The Panel recognized that prior Panels have allowed consolidation and that a “test” has been created for the determination of whether it is appropriate. The factors to be analyzed for consolidation are as follows:

(1) Number of complainants; (2) Number of domain names; (3) Voluminous filings; (4) Novel, difficult or largely untested issues; and (5) Potential for different outcomes for domain name disputes depending on nature of rights asserted.

The Panel reviewed these factors and found that there were too many overriding procedural issues to efficiently decide the case on its merits. For instance the Panel explained:

As a result, there appear to be different issues to be addressed under the first element of the Policy involving the disputed domain names <bagelthins.com> and <bagelthin.com> arising from the differing nature of the rights asserted by the Complainants in BAGEL THINS. In addition the descriptiveness question referred to above may also create the potential for different outcomes with respect to these disputed domain names under the second or third elements of the Policy. And, as noted earlier, <bagelthins.com> initially was used by the Respondent in a way that it appears the other disputed domain names have not been used. For all of the foregoing reasons, the Panel after careful consideration is not persuaded that the Complainants have made a sufficient showing to permit consolidation of the multiple complainants involved here. The Panel is concerned among other things that a multiplicity of issues could render the summary and expedited dispute resolution process envisioned by the Policy inefficient or ineffective, or even raise issues concerning fairness and equity.

Ultimately the Panel DENIED the request for transfer, but did so without prejudice, permitting the Complainants to re-file individually.

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