World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Laura Ashley Limited v. Protected Domain Services – Customer ID: NCR-302093 / Simon Dohonu, Transworld Leisure Limited

Case No. D2010-1922

1. The Parties

Complainant is Laura Ashley Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by SafeNames Ltd., United Kingdom.

Respondent is Protected Domain Services - Customer ID: NCR-302093 / Simon Dohonu, Transworld Leisure Limited of Port Vila, Efate, Vanuatu.

2. The Domain Name and Registrar

The disputed domain name <laurashley.com> is registered with Name.com LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2010. On November 10, 2010, the Center transmitted by email to Name.com LLC a request for registrar verification in connection with the disputed domain name. On November 11, 2010, Name.com LLC 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 and submitting an “Informative Filing”. The Center sent an email communication to Complainant on November 12, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 15, 2010.

The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on November 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 5, 2010. Respondent communicated with the Center on November 12 and December 6, 2010, and January 10, 2011, but did not submit any formal response.

The Center appointed Ross Carson as the sole panelist in this matter on December 20, 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.

On December 6, 2010, Respondent Transworld Leisure Limited informed the Center that formal notification by post was only received in Vanuatu on Friday December 3, 2010, and that there was not sufficient time to file a Response by December 5, 2010. Respondent advised that they will be contesting the claim and will submit their reasons within 20 days allowed from when it received formal notice by post. The Center advised Respondent Transworld Leisure Limited that the binding date for filing the Response would be decided by the Panel when appointed. Respondent has not submitted a Response or a request for an extension of time to file a Response, but indicated in an email communication to the Center on January 10, 2011 that he would “await the panel’s decision and appeal against it if need be”.

The Panel finds that a copy of the revised Complaint and Annexes to the revised Complaint were transmitted electronically to Respondent Transworld Leisure Limited together with the “Notification of Complaint and Commencement of Administrative Proceeding” on November 15, 2010. The “Notification of Complaint and Commencement of Administrative Proceedings” informed Respondent that a Response was due on or before December 5, 2010. On November 15, 2010 Respondent Transworld Leisure Limited confirmed receipt of the Annexes to the Complaint and amended Complaint, and the “Acknowledgement of Receipt” email communication from the Center referencing the “Notification of Complaint and Commencement of Administrative Proceedings” and the Response due date of December 5, 2010.

Pursuant to paragraphs 2(f) and (g) of the Rules under the UDRP, Respondent is bound by the earliest date on which it was notified by the Center of the due date for filing a Response. The earliest date of notification to Respondent was the Internet notification dated November 15, 2010, which stated that a Response was due by December 5, 2010. Respondent acknowledged receipt of the Annexes to the Complaint and amended Complaint, and the “Acknowledgement of Receipt” email communication from the Center referencing the “Notification of Complaint and Commencement of Administrative Proceedings” and the Response due date of December 5, 2010. The date of receipt of the communication by post not being the earliest date of communication of the due date for filing a Response is irrelevant in the circumstances of this case, however, the courier records indicate that communication by written notice was delivered to the address associated with the Respondent on November 23, 2010.

The Panel finds that Respondent was properly notified that the Response was due on or before December 5, 2010 and failed to file the Response within the time set by the Rules.

4. Factual Background

Complainant is a UK based company that was founded in 1954. It is an international designer and retailer of clothing and home furnishings. The trademark and name of Complainant is derived from the name of its co-founder, the textile designer Laura Ashley. Complainant has made consistent use of its trading name Laura Ashley for over 56 years and through its efforts, Complainant has established a strong customer base and is known throughout its trading area as a provider of women’s clothing, home décor and furnishings and related items via its retail stores, mail order and on-line retail store.

Complainant has over 230 stores in the UK and the company has growing franchise operations in over 26 countries, including the Far East, Australia, Scandinavia and South America, as well as increasing numbers of licensing projects for products including carpets, eyewear, scarves and bed linen. Complainant’s operating group has increased the revenue they generate from the Laura Ashley brand on a year by year basis over the past five years. The revenue generated in millions in pounds sterling each year over the past five operating years (ending end of January) are: 2006, 211.1; 2007, 225.0; 2008, 237.6; 2009, 260.5; 2010, 268.4.

Complainant or its sister company are the owners of numerous trademark registrations for or including LAURA ASHLEY as the distinctive element registered in relation to goods and services relating to textiles, clothing, home décor and home furnishings in many International Classes. Complainant owns at least eleven trademarks registered under the Madrid Agreement; twenty five trademarks registered in the U.K.; nine trademarks registered in the United States Patent and Trademark Office; and six Community trademark registrations. Many of the trademarks were registered in the 1970’s; 1980’s; and 1990’s prior to registration of the disputed domain name on March 17, 2000.

5. Parties’ Contentions

A. Complainant

A.1. Identical or Confusingly Similar

Complainant submits that the name “Laura Ashley” has become synonymous with Complainant’s brand as well as their trade name. LAURA ASHLEY is a brand that has a niche ‘quintessentially English’ look which evokes timeless elegance and harmony. The Laura Ashley name conjures up images of pretty, romantic women and rooms draped in tasteful, gracious dresses and soft furnishings sold by Complainant. Complainant asserts that Laura Ashley is so definitively known that the name has acquired secondary meaning in the mindset of the public and that this meaning leads to an association of the name “Laura Ashley” with Complainant’s brand and company’s recognizable look.

Complainant or its sister company are the owners of numerous trademark registrations for or including LAURA ASHLEY as the distinctive element registered in relation to goods and services relating to textiles, clothing, home décor and home furnishings in many International Classes. Complainant owns at least eleven trademarks registered under the Madrid Agreement; twenty five trademarks registered in the U.K.; nine trademarks registered in the United States Patent and Trademark Office; and six Community trademark registrations. Many of the trademarks were registered in the 1970’s; 1980’s; and 1990’s prior to registration of the disputed domain name on March 17, 2000.

Complainant asserts that the disputed domain name is confusingly similar to both their trademarks for or including LAURA ASHLEY. Complainant further asserts that it has long been established through UDRP case law that the TLD suffix part of the domain name can be disregarded when making comparisons of confusing similarity as the “.com” part of the domain name does nothing to distinguish the domain name from the trademark. See, Turkcell Iletisim Hizmetleri A.S. v. kara tara, WIPO Case No. D2010-1184.

Complainant submits that the remaining dominant part of the domain name in dispute is “LAURASHLEY” and on a prima-facie basis, this is virtually identical to Complainant’s mark LAURA ASHLEY. Currently spaces and symbols are not permitted in domain names as they are reserved characters and as such, Complainant’s mark would be displayed as “LAURAASHLEY”. The disputed domain name is a clear-cut typo-variant of Complainant’s service and trademark as it differs only by the deletion of the letter “a” from Complainant’s mark.

In Network Solutions, LLC v. Terry Wang, WIPO Case No. D2004-0675, the panelist stated that “[t]he deletion or addition of one letter is an insignificant change for the purposes of Policy paragraph 4(a)(i)” as supported by Universal City Studios, Inc. v. HarperStephens, WIPO Case No. D2000-0716 where it was found that the deletion of a letter from complainant’s mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to the mark.

Furthermore, “typosquatted domain names are intended to be confusing so that Internauts, who unwittingly make common typing errors, will enter the domain name instead of the mark.” See, National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011. On this basis, Complainant asserts that given the nature and intent of the disputed domain name to confuse, there can be no question that the disputed domain name is confusingly similar to Complainant’s trade name and trademark rights as the typosquatting “practice has long been recognized as a strong ground for a finding of identity or confusing similarity within the meaning of paragraph 4(a)(i) of the Policy.” See, EPSON Europe BV for and on behalf of Seiko EPSON Corporation v. Igor S Panin, WIPO Case No. D2009-1503.

A.2 No Rights or Legitimate Interests in respect of the Domain Name

Complainant states that Respondent has not been licensed by Complainant or authorized in any way to use the trademark LAURA ASHLEY and Respondent is not an authorized dealer or reseller of LAURA ASHLEY products. Moreover, Respondent is not affiliated with Complainant in anyway whatsoever and could not make any legitimate use of the domain name given the fame, reputation and goodwill associated with Complainant’s brand. See, Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055, “in the absence of any license or permission from the [c]omplainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed”.

Prior to this dispute, the disputed domain name, <laurashley.com>, was forwarding web traffic to the site “www.gnnu.com” for which the Registrant is listed as Respondent Transworld Leisure Limited, Simon Dohonu.

As of the time of filing, the site appears to re-direct to the official Laura Ashley website. However, on closer inspection, the domain in dispute actually redirects Internet users to the official website via “www.mohairdirect.com”. The re-direction is not noticeable as it is quick and users unfamiliar with the Internet may be led to believe that the domain in dispute is owned by Complainant.

Complainant states that it operates an affiliate program under which owners of websites can provide links to Complainant’s official website and are paid commission for every referral who then goes on to buy a product from Complainant’s site.

The website “www.mohairdirect.com” is associated with an affiliate account which has now been suspended and as such, Complainant asserts that Respondent chose the alias, Juanette Pettitt, and set up an affiliate account with Complainant. In doing so, Respondent has intentionally set out to deceive Complainant with regards to the real source of the web traffic.

Complainant submits that since the disputed domain name was created in 2000 and prior to any notice to Respondent regarding the current proceedings, there has been and still is no evidence to support any assertions that Respondent had the intention to either make use of or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.

Particular emphasis is placed on the term “bona fide” as it has been established through precedents that rights and legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with Complainant. See, The British Broadcasting Corporation v. Jaimie Renteria, WIPO Case No. D2000-0050 and Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “madonna.com”, WIPO Case No. D2000-0837, the panel found that “use which intentionally trades on the fame of another can not constitute a ‘bona fide’ offering of goods or services. To conclude otherwise would mean that a [r]espondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy”.

Complainant further submits that the facts of the current case are very similar to Ross-Simons of Warwick, Inc. v. Admin Billing, WIPO Case No. D2004-0696, where the panelist stated “the [r]espondent has no connection to the [c]omplainant’s mark other than as an affiliate, but it appears to be abusing that relationship. This fact, coupled with the creation of domain names that appear to be designed purposely to mislead, raises a strong inference that the [r]espondent does not have a legitimate interest in the subject domain names. The [r]espondent has done nothing to displace this inference.”

Complainant states that a simple Google search for the term “Laura Ashley” returns results which are related exclusively to Complainant and its brand. Additionally, searches conducted within the International, United Kingdom, United States and European Community trademark databases for the term “Laura Ashley” have yielded no results that correspond to Respondent.

A.3 Registration in Bad Faith

Complainant submits that Respondent has a history of registering domain names which are misspellings of well-known trademarks. Respondent has been involved in two prior domain name disputes concerning domain names which used the country code corresponding to the United Kingdom. The disputes, Staples, Inc. v. Transworld Leisure (Vanuatu) Limited, Nominet Case No. DRS 01514 and Argos Limited. v. Transworld Leisure (Vanuatu) Limited, Nominet Case No. DRS 01669, were administered by Nominet. The cases involved well-known trademarks Staples and Argos respectively. Respondent registered the domain names <staples.co.uk> and multiple domain names including <argostores.co.uk> which breached the trademark rights of the respective trademark owners.

Complainant further submits that Respondent is also the registrant of numerous domain names that clearly infringe upon the rights of other well-known brands. A selection of the domain names and their registration dates is as follows; <rhynair.com>, 08/08/2002; <rhynair.co.uk>, 08/08/2002; <rhyanair.co.uk>, 05/12/2002; <skypenet.co.uk>, 04/03/2005; <skypetelecom.co.uk>, 04/03/2005; <virgintraintickets.co.uk>, 26/05/2006; <virignrail.co.uk>, 07/12/2007; <virigntrain.co.uk>, 07/12/2007; <virjinatlantic.co.uk>, 11/09/2008; <virjincards.co.uk>, 12/09/2008; <virjinholidays.co.uk>, 11/09/2008; <virjinmobile.co.uk>, 11/09/2008; <virjinmobiles.co.uk>, 12/09/2008; and <virjinmoney.co.uk>, 12/09/2008.

Complainant submits that in registering the above domain names and the current disputed domain name, Respondent has demonstrated its intentions in registering typo-variants of well-known trademarks. The fact that the disputed domain name is a typo-variant of Complainant’s mark leads to the conclusion that Respondent had every intention of capitalizing on such a mark and such intention equates to bad faith registration as envisioned in the Policy. As stated aptly by a previous panel, typosquatting is inherently parasitic and of itself evidence of bad faith, National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011.

A.4 Use in Bad Faith

Complainant asserts that the disputed domain name was registered by Respondent in order to prevent Complainant from reflecting its trademark and name LAURA ASHLEY in a corresponding domain name. The UDRP requires that in order to show that this is bad faith, Respondent must have engaged in a pattern of such conduct.

Complainant states that Respondent has been involved in two prior domain name disputes concerning domain names which used the country code corresponding to the United Kingdom. Accordingly, the disputes, Staples, Inc. v. Transworld Leisure (Vanuatu) Limited, Nominet Case No. DRS 01514 and Argos Limited v. Transworld Leisure (Vanuato) Limited, Nominet Case No. DRS 01669, were administered by Nominet. The cases involved well-known trademarks Staples and Argos respectively. Respondent registered the domain names <staples.co.uk> and multiple domain names including <argostores.co.uk> which infringed upon the trademark rights of the respective trademark owners.

Complainant states that in considering, a pattern of conduct, previous UDRP panels have found as follows: Vitro,S.A. de C.V., Vitro Vidrio y Cristal, S.A. de C.V. and Vitro Global, S.A. v. ICG, WIPO Case No. D2005-1150, “the consensus view of UDRP [p]anelists is that a pattern of conduct can involve multiple UDRP cases with similar fact situations or a single case where the respondent has registered multiple domain names which are similar to known trademarks...” Alternatively, in NBTY, Inc. v. LaPorte Holdings, WIPO Case No. D2005-0835 it was stated that a pattern of bad faith conduct is “previous conduct found to be in breach of the Policy by the registration of a large number of domain names the subject of one complaint... and/or ... the registration of domain names against multiple complainants.”

Complainant further submits that the prior domain disputes should be taken into account in conjunction with the fact that Respondent has actively registered a list of domain names that clearly infringe upon the rights of other well-known brands. A selection of such domain names owned by Respondent and their registration dates is as follows: <rhynair.com>, 08/08/2002; <rhynair.co.uk>, 08/08/2002; <rhyanair.co.uk>, 05/12/2002; <skypenet.co.uk>, 04/03/2005; <skypetelecom.co.uk>, 04/03/2005; <virgintraintickets.co.uk>, 26/05/2006; <virignrail.co.uk>, 07/12/2007; <virigntrain.co.uk>, 07/12/2007; <virjinatlantic.co.uk>, 11/09/2008; <virjincards.co.uk>, 12/09/2008; <virjinholidays.co.uk>, 11/09/2008; <virjinmobile.co.uk>, 11/09/2008; <virjinmobiles.co.uk>, 12/09/2008; and <virjinmoney.co.uk>, 12/09/2008.

Complainant further submits that in registering the above domain names and the current disputed domain name, Respondent has demonstrated his intentions in registering typo-variants of well-known trademarks. Respondent is clearly preventing the lawful trademark owners from registering domain names which are significant typo-variants of their trademarks. In doing so, Respondent is taking away web traffic which, more likely than not, would have ended up on the official websites of the trademark owners.

Complainant states that Respondent has intentionally attempted to attract for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website.

The affiliate agreement used by Complainant asks all persons who sign up to Complainant’s affiliate program to refrain from registering domain names which relate to or incorporate Complainant’s trademarks.

Complainant states that Respondent is using a fake alias to register and maintain the affiliate account. Respondent has clearly breached the affiliate agreement by registering domain names which relate to Complainant’s trademarks and in doing so, caused disruption to Complainant’s business. Paragraph 4(b) of the Policy is not an exhaustive list on what circumstances in particular can give rise to an inference that there has been bad faith registration and use of the domain name. Taking this into account, Complainant asserts that Respondent’s conduct is strong prima facie evidence of bad faith registration and use of the disputed domain name.

Complainant further states that Respondent intentionally created a likelihood of confusion with Complainant’s trademark LAURA ASHLEY by using the disputed domain name to lure Internet users who make a common typing error, through their website to Respondent’s site. In the course of redirection, Respondent was able to increase the number of referrals that were directed to Complainant’s site and thus increase its likelihood of commission which intrinsically leads to commercial gain.

Complainant states that as found in The Sportsman’s Guide, Inc. v. JoyRide, WIPO Case No. D2003-0153, a case in which respondent was making a commercial use of the domain names by re-directing visitors to complainant’s site in order to earn a commission through an affiliate advertising program: “[c]omplainant was liable to pay commission fees for the benefit of re-directed traffic which could reasonably have been expected to reach the [c]omplainant’s site directly, had it not been for the [r]espondent’s use of [a] confusingly similar domain [name].”

Complainant states that although re-direction in itself does accrue some benefit to Complainant, Complainant asserts that this in itself cannot absolve or lessen the inherent bad faith of Respondent’s parasitic conduct. Complainant submits that at the time of registration Respondent knew full well of Complainant’s brand name and of the goodwill associated with the trademark LAURA ASHLEY.

Complainant submits that as stated aptly by a previous panel in National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011, “typosquatting is inherently parasitic and of itself evidence of bad faith”. There can be no doubt that the disputed domain name has been registered and is being used in bad faith by Respondent as it has made over GBP18,766.54 from Complainant’s affiliate program. Respondent would not have made such financial gain if it were not for it’s unauthorized use of the disputed domain name.

Complainant states that Respondent intentionally set out to deceive Complainant as to the actual source of the web traffic by redirecting the traffic from the disputed domain name to an intermediary site prior to re-directing to Complainant’s site. It is unknown whether Respondent has set up any other affiliate accounts using other aliases but Complainant wishes to assert that Respondent is fully capable of such action. In the past, the disputed domain name did at some point re-direct to the official Laura Ashley webpage but Complainant is unable to prove whether this was done in a similar manner to the present re-direction.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(i) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) 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 fact that Respondent did not submit a Response does not automatically result in a decision in favor of Complainant. The failure of Respondent to file a Response results in the Panel drawing certain inferences from Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trademark and secondly that the disputed domain name is identical to or confusingly similar to the trademark in which Complainant has rights.

Complainant or its sister company are the owners of numerous trademark registrations for or including LAURA ASHLEY as the distinctive element registered in relation to goods and services relating to textiles, clothing, home décor and home furnishings in many International Classes. Complainant owns at least eleven trademarks registered under the Madrid Agreement; twenty five trademarks registered in the U.K.; nine trademarks registered in the United States Patent and Trademark Office; and six Community trademark registrations. Many of the trademarks were registered in the 1970’s; 1980’s; and 1990’s prior to registration of the disputed domain name on March 17, 2000.

The disputed domain name <laurashley.com> was registered on March 17, 2000, more than twenty years after registration of Complainant’s first registration of the trademark LAURA ASHLEY.

The disputed domain name <laurashley.com> is identical to Complainant’s registered trademark LAURA ASHLEY in sound, but differs by the absence of one letter “a” found in Complainant’s registered trademark. Respondent is involved in “typosquatting”; the practice of using a domain name misspelling of a complainant’s trademark. In Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362, the panel found that the domain name <0xygen.com>, with a “zero” in place of the letter “O” was calculated to trade on complainant’s name by exploiting likely mistakes by users of the URL.

In Network Solutions, LLC v. Terry Wang, WIPO Case No. D2004-0675, the panelist stated that “[t]he deletion or addition of one letter is an insignificant change for the purposes of Policy paragraph 4(a)(i)” as supported by Universal City Studios, Inc. v. HarperStephens, WIPO Case No. D2000-0716 where it was found that the deletion of a letter from complainant’s mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to that of the mark.

Furthermore, “typosquatter domain names are intended to be confusing so that Internauts, who unwittingly make common typing errors, will enter the domain name instead of the mark.” See, National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011.

The inclusion of the top level domain descriptor “.com” in the disputed domain name does not affect a finding of confusingly similarity. UDRP panels have repeatedly held that the specific top-level of the domain name such as “.org”, “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (See, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 finding that the 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).

The Panel finds that Complainant has proven that the disputed domain name is confusingly similar to Complainant’s registered trademark LAURA ASHLEY.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the disputed domain name.

Respondent has no United Kingdom, Madrid, Community or United States trademark registration for the trademark LAURA ASHLEY or any trademark confusingly similar thereto. Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainant’s registered trademark or any trademark confusingly similar thereto.

Complainant operates an affiliate program under which owners of websites can provide links to Complainant’s official website and are paid commission for every referral who then goes on to buy a product from Complainant’s site. The affiliate agreement used by Complainant asks all persons who sign up to Complainant’s affiliate program to refrain from registering domain names which relate to or incorporate Complainant’s trademarks.

Respondent Transworld Leisure World Limited, Simon Dohonu is the owner of a website “www.mohairdirect.com” which is associated with Juanette Pettitt. As the domain name <mohairdirect .com> is registered in Respondent’s name the Panel infers that Juanette Pettitt is an alias for Respondent. The landing page associated with the disputed domain name <laurashley.com> was at one time the website “www.mohairdirect.com” which re-directs the Internet user to the official LAURA ASHLEY website. The re-direction is not noticeable as it is quick and users unfamiliar with the Internet may be led to believe that the disputed domain name is owned by Complainant. As a result of Respondent’s deception of Internet users and Complainant, Respondent was earning referral fees from Complainant from Internet users clicking on the disputed domain name who subsequently purchased goods on the official LAURA ASHLEY website. Since discovering deception of Internet users and Complainant with respect to the real source of the web traffic, Complainant has cancelled the affiliate account associated with Respondent through the alias.

Respondent’s unauthorized use of the confusingly similar disputed domain name to earn referral fees through a deceptive intermediate website owned by Respondent is not a bona fide use of the disputed domain name. See, Ross-Simons of Warwick, Inc. v. Admin Billing, WIPO Case No. D2004-0696, where the panelist stated “the [r]espondent has no connection to the [c]omplainant’s mark other than as an affiliate, but it appears to be abusing that relationship. This fact, coupled with the creation of domain names that appear to be designed purposely to mislead, raises a strong inference that the [r]espondent does not have a legitimate interest in the subject domain names. The [r]espondent has done nothing to displace this inference.

It is difficult for a complainant to prove the negative that respondent does not have any rights or legitimate interests in a disputed domain name. Respondent was given the opportunity by way of reply to demonstrate any rights or legitimate interests in the disputed domain name pursuant to paragraph 4(c) of the Policy. Previous decisions under the UDRP have found it sufficient for complainant to make a prima facie showing that respondent does not have any rights or legitimate interests in the disputed domain name. Respondent did not file a Response and avail itself of the benefits of paragraph 4(c) of the Policy.

The Panel finds that Complainant has made an undisputed prima facie showing that Respondent does not have any rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(a)(iii) of the Policy, Complainant must prove that the disputed domain name has been registered and is being used in bad faith.

C. 1 Registered in Bad Faith

Respondent has a history of registering domain names which are misspellings of well-known trademarks. Respondent has been involved in two prior domain name disputes concerning domain names which used the country code corresponding to the United Kingdom. The disputes, Staples, Inc. v. Transworld Leisure (Vanuatu) Limited, Nominet Case No. DRS 01514 and Argos Limited v. Transworld Leisure (Vanuatu) Limited, Nominet Case No. DRS 01669, were administered by Nominet. The cases involved widely-known trademarks Staples and Argos respectively. Respondent registered the domain names <staples.co.uk> and multiple domain names including <argostores.co.uk> which breached the trademark rights of the respective trademark owners.

In registering the above domain names and the current disputed domain name, Respondent has demonstrated its intentions in registering typo-variants of widely-known trademarks. The fact that the disputed domain name is a typo-variant of Complainant’s mark leads to the conclusion that Respondent had every intention of capitalizing on such a mark and such intention equates to bad faith registration as envisioned in the Policy. As stated aptly by a previous panel, “typosquatting is inherently parasitic and of itself evidence of bad faith, National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011.

C. 2 Domain Name Used in Bad Faith

Complainant asserts that Respondent has registered the disputed domain name in order to prevent the owner of the trademark LAURA ASHLEY from reflecting the trademark in a corresponding domain name, providing Respondent has been involved in a pattern of such conduct.

The Panel finds that Respondent is involved in “typosquatting”; the practice of using a domain name which is a misspelling of a trademark and acting in bad faith in a number of disputed domain name cases referred to above. Respondent has registered a list of domain names that typosquat upon well-known brands of others. A selection of such domain names owned by Respondent and their registration dates is as follows: <rhynair.com>, 08/08/2002; <rhynair.co.uk>, 08/08/2002; <rhyanair.co.uk>, 05/12/2002; <skypenet.co.uk>, 04/03/2005; <skypetelecom.co.uk>, 04/03/2005; <virgintraintickets.co.uk>, 26/05/2006; <virignrail.co.uk>, 07/12/2007; <virigntrain.co.uk>, 07/12/2007; <virjinatlantic.co.uk>, 11/09/2008; <virjincards.co.uk>, 12/09/2008; <virjinholidays.co.uk>, 11/09/2008; <virjinmobile.co.uk>, 11/09/2008; <virjinmobiles.co.uk>, 12/09/2008; and <virjinmoney.co.uk>, 12/09/2008.

In registering the above domain names and the current disputed domain name, Respondent has demonstrated its intentions in registering typo-variants of widely-known trademarks. The fact that the disputed domain name is a typo-variant of Complainant’s mark leads to the conclusion that Respondent had every intention of capitalizing on such a mark. As stated aptly by a previous panel, typosquatting is inherently parasitic and of itself evidence of bad faith, National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011.

In considering a pattern of conduct, previous UDRP panels have found as follows: Vitro,S.A. de C.V., Vitro Vidrio y Cristal, S.A. de C.V. and Vitro Global, S.A. v. ICG, WIPO Case No. D2005-1150, “the consensus view of UDRP [p]anelists is that a pattern of conduct can involve multiple UDRP cases with similar fact situations or a single case where the respondent has registered multiple domain names which are similar to known trademarks...” Alternatively, in NBTY, Inc. v. LaPorte Holdings, WIPO Case No. D2005-0835 it was stated that a pattern of bad faith conduct is “previous conduct found to be in breach of the Policy by ... the registration of a large number of domain names the subject of one complaint... and/or ... the registration of domain names against multiple complainants.”

The Panel finds that the disputed domain name was registered by Respondent in order to prevent Complainant from reflecting its trademark LAURA ASHLEY in a corresponding domain name and that Respondent has been involved in a pattern of such conduct.

Respondent Transworld Leisure World Limited, Simon Dohonu is the owner of a website “www.mohairdirect.com” which is associated with an affiliate account for which Respondent used the alias Juanette Pettitt. The landing page associated with the disputed domain name <laurashley.com> is the website “www.mohairdirect.com” which re-directs the Internet user to the official LAURA ASHLEY website. The re-direction is not noticeable as it is quick and users unfamiliar with the Internet may be led to believe that the disputed domain name is owned by Complainant. As a result of Respondent’s deception of Internet users and Complainant, Respondent was earning referral fees from Complainant from Internet users clicking on the disputed domain name who subsequently purchased goods on the official LAURA ASHLEY website. Since discovering deception of Internet users and Complainant with respect to the real source of the web traffic, Complainant has cancelled the affiliate account associated with Respondent through the alias. As found in The Sportsman’s Guide, Inc. v. JoyRide, WIPO Case No. D2003-0153, a case in which respondent was making a commercial use of the domain names by re-directing visitors to complainant’s site in order to earn a commission through an affiliate advertising program: “[c]omplainant was liable to pay commission fees for the benefit of re-directed traffic which could reasonably have been expected to reach the [c]omplainant’s site directly, had it not been for the [r]espondent’s use of [a] confusingly similar domain [name].”

This Panel finds that Respondent’s use of the confusingly similar disputed domain name <laurashley.com> to deceptively re-direct Internet users through Respondent’s website “www.mohairdirect.com” to Complainant’s official LAURA ASHLEY website for unauthorized referral fees constitutes bad faith use of the disputed domain name under paragraph 4(b)(iv) of the Policy.

The Panel finds that Respondent has also used the disputed domain name in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <laurashley.com> be transferred to Complainant.

Ross Carson
Sole Panelist
Dated: January 11, 2011

 

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