WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BareWeb, Inc. v. 21562719 Ont Ltd / Whois Privacy Services Pty Ltd
Case No. D2010-1341
1. The Parties
The Complainant is BareWeb Inc. of Avenel, New Jersey, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondents are 21562719 Ont Ltd of Brampton, Ontario, Canada and Whois Privacy Services Pty Ltd of Brisbane, Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name <wwwbarenecessities.com> (the "Domain Name") is registered with Fabulous.com Pty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2010. On August 9, 2010, the Center transmitted by email to Fabulous.com Pty Ltd. a request for registrar verification in connection with the disputed domain name. On August 10, 2010, Fabulous.com Pty Ltd. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 12, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on August 25, 2010.
The Center verified that the Complaint together with the amendment to 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 Respondents of the Complaint, and the proceedings commenced on August 26, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 15, 2010. The Respondents did not submit any response. Accordingly, the Center notified the Respondent’s default on September 16, 2010. Due to exceptional circumstances (the inadvertent omission of certain e mail addresses from the prior notification to the Respondents) the Center provided an extension period of three days to submit a Response. The Respondents did not submit any response. Consequently, the Center notified the Respondents' default to the extension on September 27, 2010.
Two entities are identified as Respondents in this procedure. Whois Privacy Services Pty Ltd were identified as the owner of the Domain Name on a "whois" search carried out on behalf of the Complainant prior to filing the Complaint, whilst 21562719 Ont Ltd was according to the Registrar the owner of the Domain Name and was added to the Complaint by amendment. As no response has been filed by either Respondent it is not necessary to distinguish between them and the term "Respondents" in this decision refers to either or both of the Respondents as necessary.
The Center appointed Nick J. Gardner as the sole panelist in this matter on September 29, 2010. 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.
4. Factual Background
The relevant facts are straightforward. The Complainant trades as a seller of lingerie and associated products under and by reference to the name BARE NECESSITIES. It (or its predecessors in business) has traded since 1967. It has an on line sales operation at the website “www.barenecessities.com”. It owns United States Trade Mark Registrations Nos.2580803 and 2580906 in respect of the words “Bare Necessities” both registered on June 18, 2002. The Complainant has won a number of awards for its business.
The Domain Name comprises the words “barenecessities” with the addition of the extra “www”. The consequence is that any consumer seeking the Complainant's web site who mistakenly fails to type a period between “www” and “barenecessities,” will be diverted to the Respondents' website as a result of the consumer's browser automatically inserting “www” followed by a period.
The Domain Name is used by the Respondents to provide a web page which is headed <wwwbarenecessities.com> and which provides "click through" links to sites offering for sale lingerie and other products which compete with the Complainant's products.
5. Parties’ Contentions
The Complainant says that the Domain Name is confusingly similar to its trade mark. It cites a number of previous UDRP decisions directed at what it describes as "typosquatting". It says the Respondents have no rights in the name Bare Necessities and the use of a web site offering links to competing products means the Domain Name was registered and is being used in bad faith.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel adopts the reasoning that is set out in WIPO Case No. D2003-0371 which concerned the domain name “wwwtonline.com”, where the complainant owned trade
marks for T ONLINE and T-ONLINE.
A. Identical or Confusingly Similar
The Complainant clearly has rights in the words “Bare Necessities”. Its United States registered trade marks establish such rights. The Domain Name is confusingly similar in that it comprises identical words together with an additional "www" – and the "www" is simply a standard non distinctive acronym for the World Wide Web. The Domain Name adds that acronym but then omits the period which is normally present as part of a web site address. The Panel finds that the Domain Name is confusingly similar to the trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
There is no evidence before the Panel in this case that the Respondent has any legitimate interest in the Domain Name for the purposes of paragraph 4(c) of the Policy. The Complainant has not licensed or otherwise permitted the Respondent to use its trade mark or to apply for any domain name incorporating any such mark. The inclusion of the prefix “www” at the beginning of the Domain Name does not create a legitimate interest. Further the Panel infers that the way the Domain Name is being used gives rise to an inference that the Respondents chose it precisely because it was identical to the Complainant's trade mark with the addition of the letters “www”, rather than being a term in which they had any separate rights.
The Panel concludes that the Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
The Panel infers that the Domain Name was deliberately chosen, in the expectation that some consumers will make a simple typing error whilst looking for the Complainant's site, and as a result end up at the Respondents' web site. The Panel infers that some consumers, once at that site will follow the provided links and "click through" to other sites which offer products which compete with those of the Complainant. The Respondents no doubt earn "click through" linking revenue as a result. Accordingly the Panel concludes that by using the Domain Name, the Respondents intentionally attempted to attract, for commercial gain, Internet users to the Respondents' web site, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondents web site or location or of a product or service on the Respondent’s web site or location. This amounts to registration and use in bad faith – see Policy para. 4(b)(iv). It is clearly part of a deliberate strategy to make money by diverting consumers looking for the Complainant's web site to the web sites of competitors. The Domain Name must have been registered with this purpose in mind (why else register a domain name like <wwwbarenecessities.com>, which includes someone else’s trade mark combined with a typographical error frequently made by customers and the subsequent use is equally 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 <wwwbarenecessities.com> be transferred to the Complainant.
Nick J. Gardner
Dated: October 13, 2010.