The Complainant is Atlas Design Group AB of Göteborg, Sweden, represented by Domain and Intellectual Property Consultants Dipcon AB, Sweden.
The Respondent is Terra Serve of Grand Cayman, Overseas Territory of the United Kingdom and Northern Ireland.
The disputed Domain Name <atlasdesign.com> is registered with Rebel.com Corp.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2009. The same day, the Center transmitted by email to Rebel.com Corp. a request for registrar verification in connection with the disputed Domain Name. On June 9, 2009, Rebel.com Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 15, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 5, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 6, 2009.
The Center appointed Luca Barbero as the sole panelist in this matter on July 13, 2009. 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.
The Complainant is Atlas Design Group AB, an International fashion company which is the owner of several trademark registrations consisting in the sign ATLAS DESIGN, such as the Community Trademark Registration No. 001154152 registered on June 8, 2000 in class 25 and the Swedish Registration No. 340759 registered on September 29, 2000 in class 25. The Complainant is also the owner of numerous trademark registrations including the sign ATLAS DESIGN, such as the Danish Registration No. VA 06.931.1995 for ATLAS A DESIGN, registered on March 1, 1996 in class 25 and the Swedish trademark No. 221101 for “ATLAS A DESIGN” registered on February 15, 1991 in classes 24 25 26.
The Complainant operates a web site at “www.atlasdesign.net” and is furthermore the registrant of a number of domain names consisting in or including the sign ATLAS DESIGN such as <atlasdesign.se> registered on March 6, 1996 and <atlasdesign.org> registered on February 24, 2000.
According to the current WhoIs database, the Domain Name <atlasdesign.com> was registered on November 9, 1998. The Panel is informed by the Complainant that, since the registration of the Domain Name, several variations have occurred in the registrant details and that the Domain Name has recently been transferred to the Respondent from the previous owner BWI Domains, which is based in the Cayman Islands as the Respondent.
The Complainant points out that Atlas Design Group AB, since its foundation in Sweden in 1943, is one of the leading fashion companies in Europe, being specialized in the production and distribution of shirts, ties and premium quality underwear and nightwear.
The Complainant contends that the Domain Name <atlasdesign.com> is identical to trademarks and domain names in which Complainant has rights as it reproduces the well-known trademark ATLAS DESIGN in its entirety.
With reference to rights or legitimate interests in respect of the Domain Name, the Complainant states that the Respondent does not have any rights in the trademark ATLAS DESIGN, since the Respondent is not a licensee of the Complainant nor has any permission to register and use the trademark ATLAS DESIGN as a domain name. Furthermore, the Complainant also states that the Respondent is not commonly known by the Domain Name.
The Complainants underlines that the Respondent is using the disputed Domain Name publishing on the corresponding web site various sponsored links, therefore attempting to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant's registered trademark.
The Complainant concludes with reference to the issue of the rights or legitimate interests that, before any notice to the Respondent of the dispute, there was no evidence of the Respondents use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services.
With reference to the registration of the Domain Name in bad faith, the Complainant highlights that the different circumstances occurred in the transfer of the Domain Name from the previous owner BWI Domains to the Respondent (such as the fact that the DNS server and the use of the Domain Name remained the same and that the new address was constituted by a P.O. Box address in the Cayman Islands, as it was for the previous owner) suggest that the Domain Name is still owned by BWI Domains and that it was transferred to the Respondent in order to complicate future legal actions. The Complainant also emphasizes that BWI Domains, which is supposed to be the same entity hidden behind the name of the Respondent according to the Complainant, has registered several domain names corresponding to registered trademarks, such as <sbionline.com> and <playdough.com>, and has thus engaged in a pattern of such conduct, being also involved in several UDRP disputes before WIPO.
Furthermore, the Complainant emphasizes that also the domain names <sbionline.com> and <playdough.com> registered by the previous owner are currently registered in the name of the Complainant and are used for pay-per-click pages. In the view of the Complainant, this circumstance supports the finding that the Respondent has engaged in a pattern of registering domain names identical or confusingly similar to registered trademarks, therefore preventing the trademark owners from reflecting their trademarks in these domain names.
The Complainant states that the Respondent is using the domain name to publish on the corresponding web site various sponsored links referring to competitors' clothes and accessories, therefore attempting to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant's registered trademark.
As a further circumstance evidencing bad faith, the Complainant informs the Panel that, according to the information provided by the Trade and Business Licensing Board on the Cayman Islands, neither “BWI Domains” nor the Respondent seem to be registered businesses on the Cayman Islands, thus indicating that fake owner information have been used for the Domain Name.
The Respondent did not reply to the Complainant's contentions and is in default.
Therefore the Panel shall decide this proceeding on the basis of the Complainant's submissions, drawing such inferences from the Respondent's default that are considered appropriate according to paragraph 14(b) of the Rules.
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service 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.
The Complainant has provided evidence of ownership of a number of trademark registrations consisting in the trademark ATLAS DESIGN such as the Community Trademark Registration No. 001154152 registered on June 8, 2000 in class 25 and the Swedish Registration No. 340759 registered on September 29, 2000 in class 25.
The Panel finds that the Domain Name is therefore identical to the trademarks owned by the Complainant.
In comparing the Complainant's marks to the Domain Name with reference to ATLAS DESIGN it should be taken into account the well-established principle that the generic top level domain may be excluded from consideration as being merely functional component of a domain name. See i.a., Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 “the specific top level of the domain name such as ‘.net' or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar”; Chevy Chase Bank, F.S.B. v. Peter Ojo, WIPO Case No. D2000-1770 “the accused domain name <chevychasebank.org> is legally identical to Complainant's trade name CHEVY CHASE BANK”.
In view of the above, the Panel finds that the Complainant has proven that the Domain Name is identical / confusingly similar to the trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent may establish a right or legitimate interest in the Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent's rights or legitimate interests in respect of the Domain Name according to paragraph 4(a) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, in line with the UDRP precedents, it is sufficient that the Complainant shows a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name in order to shift the burden of proof on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the Domain Name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; Met America Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Claim No. 852581).
In the case at hand, by not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Name.
The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant's trademarks.
Furthermore, there is no indication before the Panel that the Respondent is commonly known by the Domain Name, has made preparations to use the Domain Name in connection with a bona fide offering of goods or services, or that it intends to make a legitimate, non commercial or fair use of the Domain Name.
The Panel finds that under the circumstances the use of the disputed Domain Name merely for a pay-per-click page which directs visitors to various third party commercial websites does not constitute a legitimate, non commercial use of the disputed Domain Name under the Policy, as found in Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044.
Along the same lines were the decisions Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 and Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787, where the panel found that the respondent's use of the domain name to resolve to a directory of commercial websites was not a bona fide offering of goods and services because “(a) the disputed domain name is fairly unique and specific to the Complainant; (b) there is no apparent connection between the disputed domain name and the Respondent's website directory [...]; and (c) there is no other apparent legitimate justification for the Respondent's registration and use of the disputed domain name for its website”. Similarly, in Bilfinger Berger AG v. eService Finance Dept., WIPO Case No. D2003-0827, the panel stated that “[…] although services are offered in the form of a directory, the services do not correspond to a bona fide offering by Respondent. [The Domain Name <bilfinger.com>] is only used as a link to a generic directory [. . .]. There is no indication that the links contained on the website are related to the Respondent or to the BILFINGER name”.
See also inter alia Sports Holdings, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1146, where the panel stated: “the evidence in the Complaint indicates that the website at the Domain Name is commercial in the sense that it appears to provide links to other sites being competitors of the Complainant, and of an apparently commercial nature from which the Respondent presumably derives or intends to derive profit. Such use does not constitute a legitimate non-commercial or fair use of the Domain Name by the Respondent within the meaning of Paragraph 4(c)(iii) of the Policy.”
Moreover, it has been repeatedly stated that when a respondent does not avail himself of his right to respond to a Complaint, it can be assumed that respondent has no rights or legitimate interests in the disputed domain name (Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269).
Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name, in accordance with paragraph 4(a)(ii) of the Policy.
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that the holder has registered or has 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 the holder's documented out-of-pocket costs directly related to the Domain Name; or
(ii) the holder 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 holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder' s 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 holder's website or location or of a product or service on the holder's website or location.
As to the bad faith at the time of the registration, the Panel notes that in light of use of the trademark ATLAS DESIGN since in 1943, the amount of advertising and sales of Complainant's products in Europe and the registration and use of a number of domain names corresponding to the mentioned sign to promote the Complainant's Activities, the Respondent was more likely than not aware of the Complainant's trademark.
The Panel shares the view of a number of panel findings of “opportunistic bad faith” in the registration of renowned or even somewhat less famous trademarks as found in Gateway, Inc. v. Lorna Kang, WIPO Case No. D2003-0257. Along the same lines Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137; Prada S.A. v. Mark O'Flynn, WIPO Case No. D2001-0368; Ferrari S.p.A. v. Inter-Mediates Ltd., WIPO Case No. D2003-0050 and The Nasdaq Stock Market, Inc. v. Act One Internet Solutions, WIPO Case No. D2003-0103. As stated inter alia in DHL Operations B.V v. Net Marketing Group, WIPO Case No. D2005-0868 “...it is obvious that the value and goodwill, of the Complainant's mark DHL which has an extensive world wide recognition, would have been known to the Respondent at the time of registration of the disputed domain name. The registration and use of the mark by an entity unconnected to the Complainant gives rise to the presumption of opportunistic bad faith.”
With reference to circumstances evidencing bad faith in the use of the Domain Name, the Panel finds that internet users, in light of the contents of the web page linked to the Domain Name, may be misled on the source, sponsorship, affiliation, or endorsement of the Respondent's website. Moreover, in all likelihood, the Respondent profits by earning pay per click revenues (see inter alia Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044; Fry's Electronics, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1435; Barry D. Sears, Ph.D. v. YY / Yi Yanlin WIPO Case No. D2007-0286).
The Panel therefore finds paragraph 4(b)(iv) of the Policy to be applicable in this case since the Respondent has attempted (and probably succeeded) to attract Internet users to a website for commercial gain, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's services.
As an additional circumstance suggesting bad faith, the Panel notes that there has been no Response and in this case, as stated in Sports Holdings, Inc Supra “it is open for the Panel to infer a prima facie case of bad faith registration. The Panel also notes that the Respondent has used the present domain name in a commercial website. The evidence before the Panel indicates that the Respondent has used (or allowed the use) of the domain name for the purpose of some apparently commercial nature from which the Respondent (or a related third party) presumably derives or intends to derive revenue. This is not conduct consistent with registration and use in good faith.”
Along the same lines are the decision Renegade LLC v. Kenneth Gibert, WIPO Case No. D2008-0646, in which the panel stated: “The Complainant argues that the Domain Names were registered and used in bad faith to divert Internet users to the Respondent's website for commercial gain based on confusion with the Complainant's mark. Again, the Respondent has not denied these allegations or provided any evidence to support a finding that it registered and used the Domain Names in good faith”.
In view of the outcome of the verification about the existence of the Respondent conducted amongst the registered companies in the Cayman Island which gave negative result as per report enclosed in the Complaint, the Panel considers also as an additional circumstance evidencing the bad faith of the Respondent the possibly incomplete and false information originally provided in the WhoIs as stated inter alia in Steelcase Development Corporation v. Admin, Domain, WIPO Case No. D2005-1352 stating that the use of false contact information by the Respondent is a further indication of bad faith (Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775).
In view of the above, the Panel finds that the Domain Name was registered and is being used in bad faith.
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 <atlasdesign.com>, be transferred to the Complainant.
Date: July 27, 2009