The Complainant is Ben Sherman Group Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Page White & Farrer, United Kingdom.
The Respondent is Alan Sugarman of Hove, United Kingdom.
The disputed domain name <benshermanmerchandisingusa.com> is registered with 1&1 Internet AG.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2009. On July 16, 2009, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the disputed domain name. On July 17, 2009, 1&1 Internet AG 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 July 20, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 9, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 10, 2009.
The Center appointed Jane Lambert as the sole panelist in this matter on August 24, 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 has registered the words BEN SHERMAN as a trademark in various countries around the world, including
- the United Kingdom where that sign has been registered for “shirts and beachwear being articles of clothing, all for men and boys” in class 25 under registration number 946,853 since August 11, 1969; and
- the United States of America where the sign has been registered for suits, jackets, trousers, jeans and other goods in class 25 under registration number 2,194,981 since February 7, 1996.
The Complainant has registered the domain names <bensherman.com>, <benshermanusa.com> and <bensherman.co.uk>, and also owns the domain name <benshermanmerchandising.com>.
The disputed domain name was registered on September 11, 2006.
There is no evidence that the Respondent has used, or made 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.
Although he is not and has not been commonly known by the domain name, the Respondent has applied unsuccessfully to register the sign BEN SHERMAN MERCHANDISING as a British trademark.
The Respondent also registered <benshermanmerchandising.com> as a domain name but that domain name was transferred to the Complainant on August 7, 2006, following Ben Sherman Group Limited v. Alan Sugarman, WIPO Case No. D2006-0624.
The Respondent has parked the disputed domain on a parking site that contains a number of sponsored links.
The Complainant claims the transfer of the disputed domain name on the following grounds:
(1) the domain name is confusingly similar to trademarks in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in the domain name in that:
- he does not appear to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
- he has not been known commonly by the domain name;
(3) he has registered and used the name in bad faith in the sense that he has used it to mislead consumers and tarnish the Complainant's trademarks.
The Respondent did not reply to the Complainant's contentions.
Paragraph 4(a) of the Policy requires the Complainant to prove that each of the following elements is present:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The distinctive element of the disputed domain name is “bensherman” which is almost identical to United Kingdom registered trademark number 946,853 and United States trademark number 2,194,891.
Accordingly, the Panel holds that the first element is present.
Paragraph 4(c) of the Policy provides:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(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.”
There is no evidence that any of the above circumstances apply. Nor is there any other evidence that the Respondent has rights or legitimate interests in any of the disputed domain name.
Consequently, the Panel finds that the second element is present.
Paragraph 4(b) of the Policy entitles a Panel to find that a domain name has been registered and used in bad faith in any of the following circumstances:
“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
By parking the domain name on a parking site that contains a number of sponsored links, the Respondent has fallen full square within the ambit of paragraph 4(b)(iv) in that:
(1) Since it is likely to be generated by a search engine whenever the search terms “Ben Sherman”, “merchandising” and “usa” are entered, the domain name is being used to attract Internet users to the site where the domain name is parked which is “a web site or other on-line location”; and
(2) The Respondent has permitted the posting of sponsored links which constitute “commercial gain”; and
(3) The confusing similarity between the domain name and the Complainant's mark creates a likelihood of confusion with the Complainant's as to the source, sponsorship, affiliation, or endorsement of the on-line location.
That is enough for a finding of registration and use in bad faith but it is obvious that the Complainant's business may be affected because it will enjoy less traffic to its site and ultimately fewer sales. Accordingly, the Panel finds that 4(b)(iii) is satisfied too.
Finally, the Panel notes the finding of bad faith in the Complainant's previous claim against the Respondent for the transfer of <benshermanmerchandining.com> (Ben Sherman Group Limited supra) and in the Complainant's successful opposition to the Respondent's application to register BEN SHERMAN MERCHANDISING as a United Kingdom trademark.
The Panel therefore finds the third element is present.
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 <benshermanmerchandisingusa.com> be transferred to the Complainant.
Dated: September 3, 2009