The Domain Holder represented himself and beat back a claim on 25 domains may of which contained trademarked terms and were all pointed to a PPC page. Moreover the domain holder rejected an offer by the complainants to buy the domains for $500 each saying “they were worth much more”
I’m not sure I have ever seen a global brand lose a UDRP for so many domains in one case.
However it was that several complainant joined together to seek 25 domains in one UDRP that eventually sank the complainant
On to the case:
“The Complainant are Grupo Bimbo S.A.B. de C.V., Bimbo Hungria ZRT., Arnold Products, Inc., Orograin Bakeries Products, Inc. and Bimbo Bakeries USA, Inc. of Mexico City,
The Respondent is John Paulsen of Saint Helen, Michigan, United States of America, who represented himself.
The domain names in question were:
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
tiarosatortillas.com
are registered with GoDaddy.com, Inc.
“The Complainants consist of Grupo Bimbo S.A.B. de C.V., of Mexico (hereinafter “Grupo Bimbo”), Bimbo Hungria ZRT. (hereinafter “Bimbo Hungria”), Arnold Products, Inc. (hereinafter “Arnold”), Orograin Bakeries Products, Inc. (hereinafter “Orograin”), and Bimbo Bakeries USA, Inc. (hereinafter “Bimbo USA”) (collectively referred to hereinafter as the “Complainants”). Grupo Bimbo is a large and internationally known baking company. The other Complainants all appear to be subsidiaries of Grupo Bimbo, according to the Complaint”
The Complainants are asserting rights individually in twenty-four (24) trademarks, and have provided evidence of valid and subsisting national trademark registrations in the United States of America (issued by the United States Patent and Trademark Office (“USPTO”)), respectively, for the following fifteen (15) trademarks:
Complainant Grupo Bimbo
GRUPO BIMBO
BIMBO
TIA ROSA
CORONADO
LARA
Complainant Arnold
SANDWICH THINS
BROWNBERRY
FILL `EMS
Complainant Orograi
BOBOLI
ENTENMANN’S
FREIHOFER’S
STROEHMANN
Complainant Bimbo USA
FRANCISCO
OLD COUNTRY
OROWEAT
“The Complaint further asserts that Complainant Bimbo Hungria is the “registered owner” of the BAGEL THINS mark. However, no proof of a national trademark registration has been provided for BAGEL THINS. The record reflects that Bimbo Hungria has filed an application with the USPTO to register BAGEL THINS for use with “bakery goods”, but the USPTO has to date refused registration based on descriptiveness. ”
“At present, all of the disputed domain names resolve to pay-per-click parking sites, featuring advertising links to websites featuring baked goods, including the goods of a number of the Complainants’ competitors.”
“Initially, the Respondent had directed the disputed domain name <bagelthins.com> to the website of one of these competing baking companies. After receiving notice of the Complainants’ asserted trademark rights in BAGEL THINS, the Respondent discontinued this use of this disputed domain name, but as noted above, instead associated the disputed domain name with a pay-per-click parking site.”
“The Respondent registered the vast majority of the twenty-five disputed domain names after this initial contact by the Complainants’ counsel. The Respondent registered twenty-one of the disputed domain names during a two-week period from August 20, 2010 to September 1, 2010, and contacted the Complainants’ counsel on an unsolicited basis on at least two occasions to note his registration of these domain names, which he opined the Complainants would find “interesting”. Subsequently, the Respondent also declined an offer from the Complainants to buy the disputed domain names for the sum of USD 500 each, maintaining that the disputed domain names were worth far more.””
“”The Response submitted in this case 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 one member panel found:
“”The consolidation of multiple complainants in a single complaint should be permitted if the complainants have a truly common grievance against the respondent, and it is equitable and procedurally efficient to do so.””
“Petitioning multiple complainants may have a common grievance against the respondent where they have a common legal interest in relevant right or rights allegedly affected by the respondent’s conduct. A common grievance may also be present, even in the absence of a shared legal interest in a specific trademark, where the multiple complainants are the target of common conduct by the respondent that has clearly affected their individual legal interests. ”
“These instances are not intended to be exclusive of circumstances in which a common grievance sufficient to justify consolidation may exist; however, a “truly common grievance” must be demonstrated, and consolidation must be equitable to all parties and procedurally efficient”
“In situations where petitioning multiple complainants do not have a shared interest in a particular trademark, and otherwise there is no “overarching legal structure” or “overarching legal entity”, it is unlikely that the complainants can demonstrate a common legal interest sufficient to justify their consolidation in a single complaint. ”
“In this instance, the Panel notes at the outset that the Complaint does not specifically state as such that the petitioning Complainants as a group have a “common legal interest” in the trademarks being asserted. In the Panel’s view, the record reflects that the Complainants rely upon individually vested rights in their respective marks, notwithstanding their apparent affiliation. ”
“The Respondent’s registration of the disputed domain names appears to reflect a pattern specifically directed towards the Complainants as a group, particularly in light of the Respondent’s communications with the Complainants’ counsel regarding the domain name registrations.”
“The Respondent uses the disputed domain names for the most part with parking sites containing links to third party websites promoting the goods of the Complainant’s competitors. Such use also is indicative of a pattern of targeting the Complainants’ rights.”
“However, as further described below, the Panel need not make a finding of whether the Complainants have demonstrated a common grievance since such standing alone does not support the consolidation of multiple complaints, unless it is also demonstrated that such consolidation will be fair and just to all parties, and procedurally efficient from the perspective of judicial economy. Indeed, given the – what some might see as – expansive nature of the “common grievance” standard, the conjoined requirements of procedural efficiency, fairness and equity are essential to ensure that the consolidated complaint will be appropriate for disposition under the Policy’s summary administrative proceeding.”
“In this case, the Panel has taken into account the number of Complainants, the substantial number of marks in which the Complainants’ assert individual rights, and the substantial number of disputed domain names involved to be relevant concerns, bearing in mind that the consolidation is sought in the context of the Policy’s expedited and summary administrative proceeding.”
“While the number of petitioning Complainants (five) is not of itself particularly daunting, there are nonetheless twenty-four (24) marks in which the five Complainants are asserting largely individual rights. Moreover, in this case the Complainants are asserting such individual rights in these twenty-four (24) marks with respect to twenty-five (25) disputed domain names.”
“The Complainants have submitted voluminous materials to support their claims, consisting of the twenty-three annexes to the Complaint. The original Complaint submitted in this case was significantly in excess of the 5000 word page limit”
“In the Panel’s view, this is particularly so in cases where multiple complainants are seeking consolidation involving a large number of disputed domain names. If the petitioning complainants are unable to effectively present their claims in a complaint that meets the requirements of the Policy and the Rules, including the word limit requirements, or can do so only by placing large portions of material more appropriately included in the complaint in an annex, or otherwise submit unnecessarily voluminous materials with the complaint, then there is legitimate reason for concern that consolidation in such circumstances may not be procedurally efficient, and fair and equitable to all parties.””
“”It should also be borne in mind that a respondent under the Policy and Rules is required to observe the 5,000 word limit when submitting a response, and must submit the response in twenty days unless the petitioning complainants agree to an extension of time ”
“As noted earlier, two of the Complainants are seeking the transfer of the disputed domain names <bagelthins.com> and <bagelthin.com> based on the assertion of trademark rights in BAGEL THINS. Unlike the other trademarks in which the Complainants assert rights, however, there is no evidence in the record that the rights asserted in BAGEL THINS are based on a national registration or that common law rights in the same have vested. Further, the record reflects the USPTO’s current refusal to register BAGEL THINS as a mark based on descriptiveness issues, which under United States trademark law generally requires proof of secondary meaning in order to establish enforceable rights.””
“”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.”
“Accordingly, the Panel finds that the domain name disputes asserted by the multiple complaints in this matter should not be permitted to be consolidated into a single, unitary proceeding under the Policy. As such, the Panel dismisses the Complaint without prejudice, and subject to rights of each of the Complainants herein to file in their individual capacity complaints against the Respondent in relation to the disputed domain names identified herein, and based on the rights that have been asserted by the respective Complainants’ herein.”
“I’m not sure I have ever seen a global brand lose a UDRP for so many domains in one case.”
====
It is very unfortunate that just being party to a UDRP will taint all those domains from being invited to the new media platforms.
One sees the same phenom, with new Top Level Domains. Domainers are being quietly excluded from negotiations.
What some Domainers may feel are “outsiders” will enter the industry thru the backdoor and Domainers will never know about it. The same thing happened when ICANN was formed. The Echelon installed “outsiders” people had never heard of as Board members. That was the criteria, they were not tainted.
I don’t get it, in a nutshell, how did thus guy win? Was it just basically a technicality on how the TM holders approached te UDRP process?
@ jp
I don’t get it, in a nutshell, how did thus guy win?
=============
25 cutNpaste’s for one (1) FEE …
NICE TRY!
JP
Too many companies, too may domains, too many trademarks and claims bunched into one.
Read the decision, I shortened it for you
Sounds like a 5,000 word limit they broke, which caused a technicality, and the fact that they did not prove TM rights on Bagel Thins , and the various issues that did not allow for a consolidated case is what lost it for them.
If I was the owner of those domains I would be expecting a court case coming very soon. I hope he gets burned.
At the end of the day the guy is a clown for fighting them and a cybersquatter for having registered such obvious trademarks.
Every time I have been to Latin America I have seen the Bimbo name on cookies and crakers, etc….. it’s inescapable……the name is everywhere.
@MHB,
Can these companies come back individually and redo the UDRP’s one-by-one; or alternatively, can they take the domain holder to federal court to try and get these domains? In other words, is this UDRP decision the final say on the matter?
– TBC
D8
From the decision:
“””Accordingly, the Panel finds that the domain name disputes asserted by the multiple complaints in this matter should not be permitted to be consolidated into a single, unitary proceeding under the Policy. As such, the Panel dismisses the Complaint without prejudice, and subject to rights of each of the Complainants herein to file in their individual capacity complaints against the Respondent in relation to the disputed domain names identified herein, and based on the rights that have been asserted by the respective Complainants’ herein.”””
@MHB,
Thanks, guess I didn’t read it carefully enough. 🙂
– TBC
The Respondent’s response was funny too….
“The Response submitted in this case does not a directly address the Complainants’ arguments regarding the elements of paragraph 4(a) of the Policy, but 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.”
Since he is in the USA, I would imagine he will not be too pleased when hit with the next logical step from Orograin/GrupoBimbo… a Federal filing. Ouch!
Might have won the battle but will certainly lose the war…. dumb ass.
The flip-side of being “UDRP-tainted” is that the domains enter the Radar Screens
of all of the players building the new media platforms.
Ambulance-chasing UDRP attorneys like to see deep pockets for all parties at the accident scene.
They didn’t really lose — the consolidated complaint was dismissed without prejudice, and each of the complainants is free to file again in regard to their own allegedly infringed trademarks.
Many of the domains appear to be identical to trademarks (not that that’s the end of the UDRP analysis), although some are also generics — especially Bimbo.
So Mike, down the road you may be able to have the headline “Bimbo (Wins/Loses) UDRP” 😉
Awful decision. He should’ve lost most (if not all) of those.
I hate rulings based on letter-of-the-law technicalities.
“he is certain his domain names “will be stolen” by the Complainants and their attorneys.”
=====
If that happens, then “he” is ensured a place in Domain.Heaven where domains are FREE
With the new media platforms, attorneys are barred (thus the term “bar”) and money is different.
Attorneys and ICANN lose interest when money is removed from the equation. There are several hundred other name-spaces they never pay any attention to.
I don’t really keep up on this, but UDRP’s are what… $1500 a clip? And they expect mark owners to file individual proceedings on each name?
So some asshole like this John Paulson jagoff goes off on a TM registration orgy for $7.89 a pop at Godaddy and the company is required to pony up $1500 per to defend their mark, without any mechanism for cost recovery? Someone spends $789 to buy 100 infringing TM names and they have to spend $150,000 in UDRP fees to challenge it @ WIPO? Am I reading this right?
Ridiculous. I really hope they take him to court and if possible, get some sort of judgment against him to recoup their costs for such blatant TM infringement. This guy with his whole “I don’t recognize your authority” shtick is clearly a gigantic tard and deserves a big, painful swat to his wallet.
“I don’t really keep up on this, but UDRP’s are what… $1500 a clip? And they expect mark owners to file individual proceedings on each name?”
====
1. UDRP is not the law. UDRP is ICANN’s WIPO-based Kangaroo Court. It could be similar to a Kangaroo Court in the online game World of Warcraft.
2. Domain names are not trademarks. If they were, the U.S. Department of .COMmerce would have long ago brought the registry under the U.S. Patent and Trademark Office.
3. A very small group of rabid myopic UDRP attorneys have decided they can make a fortune perpetuating the terror & chaos mixing domains and trademarks. Those attorneys should be disbarred for life.
4. Most importantly, Artificial Scarcity, orchestrated primarily by ICANN and incumbent Registries have helped to fuel #3.
…Again, in hundreds of other name-spaces, where money is removed from the equation, people register ASCII strings, use them and life goes on. It is truely
ironic that Microsoft may be the game changer helping to end #1 and #3.
LS
Correct each party pays their own fees, so the complainant is out its filing fees.
Likewise a domain holder who receives a UDRP with no basis whatsoever as we recently defended in carefreehomes.com has to pay his own attorney fees $1,500 for the three member panel, without reimbursement by the one who bought the action.
…and clearly some wealthy Domainers with zillions of domains see to ENJOY enriching “A very small group of rabid myopic UDRP attorneys”.
…
Go Figure…people are strange
“…Likewise a domain holder who receives a UDRP with no basis whatsoever has to pay his own attorney fees $1,500 for the three member panel, without reimbursement by the one who bought the action.”
@MHB – that just doesn’t sound right or logical. I’m pretty sure if the person / company bought the action here in Europe they wouldn’t get away with it that easily.
PS: I’ve sent you a msg on facebook because none of my emails are going through to your email address.
Mr T.
There is no provision in the UDRP for a party to receive any of its costs or fees back whether they win or lose the case.
The party requesting the 3 member panel pays the fees for the 3 member panel
@MHB ok, but wouldn’t it make sense to let the person filing the UDRP cover ALL costs, especially when the UDRP is based on nothing but noise and useless reasoning? (pardon my lack of knowledge, I’ve never been into law.)
We own quite a few domains and I’d hate to waste our money on lawyer fees because some “wannabe” files a UDRP to mark his grounds without reason. We prefer to spend our $$ on development and branding.
Speaking of development, the message I sent you on facebook is about a certain .TV domain 🙂
The TM owners’ perspective is that they shouldn’t bear the cost of having to file against what they believe is a clearly infringing domain, much less the carrying cost of paying annual registration fees for a domain (such as a typo) that they didn’t want in the first place. So a lot of them would like to move to a “loser pays” regime in which the losing party pays both sides’ costs of the UDRP.
Given that many complainants are large corporations and the registrants are individuals or small businesses, a “loser pays” regime might well encourage far more UDRP filings, and could also discourage many registrants from even responding to a UDRP.
So while the current system is far from ideal, any move to shift the cost structure could further disadvantage registrants who have been unfairly charged with infringement.
“The TM owners’ perspective is that they shouldn’t bear the cost of having to file against what they believe is a clearly infringing domain”
====
Why have TM owners been mislead that domains are related to their Trademarks?
Why aren’t “TM owners” paying attention to the hundreds of other name-spaces in CyberSpace ? (Where names may or may not be FREE)
Are U.S.-centric TM owners defending trademarks cast in Chinese Symbols ?
…”against what they believe” << Assumes what they believe is all that matters?
What if an Internet is created that does not allow "them" to use it ?
That’s right, it’s me.
A few facts.
1. I have never sold a domain in my life.
2. I bought the first couple and forwarded them to my employer’s domain because I thought that was OK as long as I didn’t profit (Mistake)
3. I asked the Bimbo’s attorneys the legalities of transferring and all they did was offer me $50o foe the first 4 domains.
4. I bought the others thinking they too must be worth $125 each. (mistake)
5. Their attorneys write articles on how to avoid these situations, but their clients don’t do the obvious so I assumed they didn’t see a need to purchase them.
6. Their fees to WIPO were $3,000 for the complaint. I assume each future complaint is another $3,000. Makes no sense not to settle this cheaply.
Any questions or any offers to assist with the looming battles are appreciated. I have asked if they want to settle this, making zero demands, and theur “Super Lawyer”, Scott Slavick, says he will let me know if his clients want to negotiate. UNBELIEVAVLE! They could gfet out of this with not much more than my out of pocket expenses, but they are a stubborn lot.
In closing, I just want to repeat, I have never sold a domain in my life!
This is a response to John Paulsen’s post of 1/10/11:
Have you lost your mind? Grupo Bimbo is a multi-billion dollar world-wide business and could (correction, probably will) spend MILLIONS of dollars in litigation just to avoid paying you a lump sum for something that you knew was a trademark infringement from the start. All of the companies in the Complaint are basically wholly-owned subsidiaries of Grupo Bimbo. They could refile tomorrow under one umbrella and crush you — end of story. The manner of filing was, in my opinion, a means to maintain the abilities of the companies to be bought and sold to others and have the trademarks follow the companies (versus remaining with Grupo Bimbo).
I suggest you remove that smug grin off your face and prepare for a flood of real lawsuits that are inevitably coming your way.