The Complainant is Frontline GmbH of Hamburg, Germany, represented by Siebeke Lange Wilbert, Germany.
The Respondent is Gem Domains of Portland, Oregon, United States of America.
The disputed domain name <frontlineshops.com> (“the Domain Name”) is registered with Dontaskwhy.ca Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2009. On July 23, 2009, the Center transmitted by email to Dontaskwhy.ca Inc. a request for registrar verification in connection with the Domain Name. On July 28, 2009, Dontaskwhy.ca Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the Domain Name. 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 29, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 18, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 19, 2009.
The Center appointed Warwick Smith as the sole panelist in this matter on August 21, 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.
In the absence of any Response, the Panel has checked to ensure that the Center has discharged its responsibility under the Rules, paragraph 2(a), to notify the Complaint to the Respondent. The Panel is satisfied that the Center has done so.
The following (uncontested) facts are taken from the Complaint.
The Complainant is a German corporation, which has been retailing clothing on the Internet since 1995.
The Complainant owns numerous country code and generic top level domains which contain the expression “frontlineshop”. Its principal website is located at “www.frontlineshop.com”.
The Complainant has been the registered proprietor of the word mark FRONTLINESHOP (“the Complainant's mark”) in Germany, in international classes 9, 14, 18, 25, 28 and 35, since May 19, 2005. The registration covers various clothing items in class 25, sunglasses, jewellery and similar goods, and various services in class 35. The Complainant also has a Community Trade Mark registration for the Complainant's mark, effective from September 30, 2005. The Complainant's mark is used primarily in connection with clothing, advertising, mail order services, and sale of goods on the Internet, presentation of goods and services, advertising on the Internet for others, and presenting goods for sale purposes.
The Complainant asserts that there is substantial amount of favorable consumer recognition and goodwill associated with the Complainant's mark.
The Domain Name was registered on January 20, 2009.
The Domain Name has since resolved to a fairly typical “landing page” website (“the Respondent's website”), containing click-through sponsored links to websites operated by various third parties, including some operated by “e-tailers” selling clothes and shoes.
The Complainant produced screenshots of pages from the Respondent's website, taken on June 23, 2009. These screenshots show links to various third party websites, grouped under headings such as “Shoes Athletic”, “Shoes”, and “Nike Athletic – Gunstig”. Although the screenshots appear to have been taken from the English language version of the Respondent's website, some of the language appearing under the headings is in German (e.g. German text appears beneath the headings “Shoes Athletic” and “Shoes”).
One of the websites to which the Respondent's website provided a link, was the website at “www.bugarrishoes.com”, on which various items of footwear were advertised for sale. All appear to have been priced in Euros.
The Respondent's website on June 23, 2009 also contained “Related searches” on which the browser could click. These included more general subject categories, such as “computer”, “flirt”, “video” and “musik”. There were also click-on “BUY THIS DOMAIN” links, and notes reading “the domain frontlineshoes.com may be for sale by its owner!”, and “the domain frontlineshops.com may be for sale by its owner!”
The Respondent's website contained a disclaimer in the following terms:
“This page provided to the domain owner free by Sedo's Domain Parking. Disclaimer: Domain owner and Sedo maintain no relationship with third party advertisers. Reference to any specific service or trade mark is not controlled by Sedo or domain owner and does not constitute or imply its association, endorsement or recommendation.”
The Complainant produced a Google search on the expression “frontlineshop”. The primary results revealed links relating to the Complainant.
The Respondent has no affiliation with the Complainant, and the Complainant has not authorized it to register the Domain Name. The Complainant asserts that the Respondent has never been commonly by the Domain Name.
The Complainant contends:
1. The Domain Name is confusingly similar to the Complainant's mark. The only difference is the addition of the letter “s” in the Domain Name.
2. The Domain Name incorporates the Complainant's mark in its entirety. Where a disputed domain name incorporates a complainant's mark in its entirety, the disputed domain name is regarded as being confusingly similar to that mark, despite the addition of a word or letter (citing, Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; and Wal-mart Stores, Inc v. Kuchora, Kal, WIPO Case No. D2006-0033). The “.com” suffix is not taken into account in the comparison (citing, Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525, and RollerBlade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429).
3. The Respondent has no rights or legitimate interests in respect of the Domain Name, having regard to the following matters:
(i) The Respondent is not affiliated with the Complainant, and does not have the consent or license of the Complainant to register the Domain Name.
(ii) The Respondent has never been commonly known by the Domain Name.
(iii) The Respondent has not used or made demonstrable preparations to use the Domain Name.
(iv) The Respondent is not making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain.
(v) The Respondent's intention has been to trade on the fame of the Complainant's mark.
(vi) The registration and use of a domain name that is confusingly similar to a registered trademark does not provide a right or legitimate interest in a disputed domain name.
(vii) The Respondent has employed a minor misspelling of the Complainant's mark, to take bad faith advantage of spelling errors made by Internet users when they attempt to enter the Complainant's Internet address.
4. The Domain Name was registered and is being used in bad faith. The Complainant relies on the following grounds:
(i) The Respondent's choice of a domain name which incorporates a well-known and distinctive trademark is, in the absence of any evidence of rights or legitimate interests, itself indicative of bad faith registration (citing Peek & Cloppenburg KG v. Whois Privacy Protection Service, Inc./Demand Domains, WIPO Case No. D2007-0019).
(ii) There is no reasonable explanation for the Respondent registering and using the Domain Name to park a list of links leading to the websites of “e-tailers” who offer clothes or shoes. The only reason could be the Respondent's attempt to gain commercial profit from misspellings or wrong understandings of the Complainant's mark. The Domain Name is therefore used to attract Internet users for commercial gain to the Respondent's website, by creating a likelihood of confusion with the Complainant's mark.
(iii) The fact that the Domain Name resolves to a domain parking site that the Respondent operates for commercial profit, is strong evidence of the Respondent's bad faith. (The Respondent earns commission whenever an Internet user visits the Respondent's website and clicks on a sponsored link.)
(iv) Typosquatting has been held under the Policy to be evidence of bad faith registration of a domain name (citing, inter alia, News Group Newspapers Limited and News Network Limited v. Mom Amed la, WIPO Case No. D2000-1623, and America Online, Inc. v. Intellectual-Assets.com, Inc., WIPO Case No. D2000-1043).
The Respondent did not reply to the Complainant's contentions.
Under Paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
“… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable.”
Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent's failure to comply with the Rules (e.g. by failing to file a response), as the Panel considers appropriate.
The Complainant has proved this part of the Complaint. It is the registered proprietor of the Complainant's mark in Germany and in the European Union, and the Domain Name differs from that mark only by the addition of the letter “s” and the “.com” suffix. The “.com” suffix is not taken into account in the comparison (Magnum Piering, Inc. and RollerBlade, Inc., supra), and the addition of the letter “s” is insufficient to avoid confusing similarity. The Domain Name is almost indistinguishable from the Complainant's mark visually, aurally, and conceptually.
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of Paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The consensus view of WIPO panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized at paragraph 2.1 of the Center's online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, as follows:
“A Complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
In this case, the Complainant has not authorized the Respondent to use the Complainant's mark. There is no connection or affiliation between the Complainant and the Respondent. There is no evidence to suggest that the Respondent might be commonly known by the Domain Name, and therefore no possibility on the evidence of a defense under paragraph 4(c)(ii) of the Policy. The use of the Domain Name as a pointer to the Respondent's website, which is commercial in nature, leaves no room for a possible defense of legitimate non-commercial or fair use, without intent for commercial gain, under paragraph 4(c)(iii) of the Policy.
That combination of circumstances provides sufficient prima facie proof that the Respondent has no right or legitimate interest in respect of the Domain Name. The evidentiary onus therefore shifts to the Respondent. The Respondent, having failed to file any Response, has failed to meet that evidentiary onus, and the Complainant must therefore succeed on this part of its Complaint.
On the evidence which has been produced, the Panel is in any event satisfied, for the reasons which appear in section 6D of this decision, that the Respondent has not been using the Domain Name in connection with any bona fide offering of goods or services: the Respondent has been using the Domain Name for the bad faith purpose of trading off the Complainant's reputation in the Complainant's mark, and such use could never provide a basis for a claim to a right or legitimate interest in respect of a disputed domain name.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant's trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] website 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 [the respondent's] website or location or of a product or service on [the respondent's] website or location.
The Complainant has also proved this part of its Complaint.
In the absence of a Response, the Panel concludes that the Respondent was aware of the Complainant or the Complainant's mark when the Respondent registered the Domain Name in January of 2009. The Domain Name is simply the plural of the Complainant's mark, and it is improbable that the Respondent would have acquired the Domain Name without turning its mind to who might own the singular version of the Domain Name. Secondly, the European focus of the Respondent's website, and German language text appearing on it, are both consistent with the Respondent being aware of the Complainant, which is a German corporation.
The registration of a domain name which resembles the Complainant's mark so closely, its subsequent use as a pointer to a landing page providing (obviously sponsored) links to third party websites, and the advice on the Respondent's website that the Domain Name “may be for sale”, together present a fairly typical cybersquatting picture, which clearly called for an explanation from the Respondent if it has in fact acted in good faith. No such explanation has been provided, and in those circumstances the Panel can only sensibly infer that the Respondent registered the Domain Name for the bad faith purpose of selling it at a profit to the Complainant, and, pending such sale, attempting to attract, for commercial gain, Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website.
Those are, of course, the kinds of bad faith registration and use which are described at paragraphs 4(b)(i) and (iv) of the Policy.
For completeness, the Panel notes with regard to the “disclaimer” on the Respondent's website, that the Respondent cannot ‘disown' responsibility for the sponsored links on the Respondent's website. As this Panel noted in Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448, a respondent is “ultimately accountable for the use of [a disputed domain name], even if an employee (or algorithm) of an online affiliate advertising network selected the particular advertisements on display” (citing, Starwood Hotels and Resorts Worldwide Inc., Sheraton, LLC, and Sheraton International Inc. v. Jake Porter, WIPO Case No. D2007-1254; NVT Birmingham, LLC d/b/a CBS 42 WIAT-TV v. ZJ, WIPO Case No. D2007-1079 and Grisoft, s.r.o. v. Original Web Ventures In.c, WIPO Case No. D2006-1381).
The Complainant having established all three elements required to be proved under paragraph 4(a) of the Policy, the Domain Name must be transferred to the Complainant.
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 <frontlineshops.com> be transferred to the Complainant.
Dated: September 4, 2009