WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ELF Cocoon, LLC v. Brad Barnett
Case No. D2010-1934
1. The Parties
The Complainant is ELF Cocoon, LLC of Saint Francisville, Illinois, United States of America represented by Espinosa | Trueba, PL, United States of America.
The Respondent is Brad Barnett of Orangeville, Ontario, Canada.
2. The Domain Name and Registrar
The disputed domain name <teslar-watch.com> (the “Domain Name”) is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2010. On November 11, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On November 11, 2010, GoDaddy.com, Inc. 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 November 17, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 7, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 8, 2010.
The Center appointed Ian Lowe as the sole panelist in this matter on December 13, 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 Complainant has used the mark TESLAR in the United States in connection with watches since at least 1986. It is the proprietor of US trademark No. 2504442 TESLAR registered on November 6, 2001 in Class 14 in respect of electronic watches.
The Domain Name was first registered in 2006. On October 23, 2010, the Domain Name was transferred to the Respondent following an online auction. The Domain Name resolves to a website offering Philip Stein branded watches. A visitor attempting to purchase a watch is redirected to the website at “www.dexclusive.com” where Philip Stein and other watches are offered for purchase.
5. Parties’ Contentions
A. The Complainant
A summary of the Complainant’s contentions is as follows.
The Complainant has on its own behalf and through licensees heavily promoted its TESLAR trademark in relation to watches for many years. The TESLAR mark has become famous as a result of its distinctiveness and the duration and extent of its use in commerce. The Complainant has carefully cultivated the TESLAR brand, ensuring that the design, craftsmanship and performance of each model and individual watch meet the highest standards of creativity and performance.
The Domain Name is identical to the Complainant’s registered trademark TESLAR save only for the addition of the generic term “watch”.
The Domain Name was registered in 2006, and a website was set up that purported to offer “Teslar Watches” and “Teslar Watch Straps” for sale. The original registrant was not and is not an authorized reseller of the Complainant’s watches. In any event, the watches offered on the site were not the Complainant’s watches but those of Philip Stein, a former licensee of the Complainant. Philip Stein offered a co-branded PHILIP STEIN TESLAR watch pursuant to its license but now offers competing PHILIP STEIN branded watches.
Visitors to the “www.teslar-watch.com” website attempting to purchase watches are re-directed to the website at “www.dexclusive.com” through pay-per-click links. The website “www.dexclusive.com” is not an authorized TESLAR reseller. At this website, visitors may purchase Philip Stein and other brand watches but not those of the Complainant.
On October 15, 2010, the Complainant received an e-mail from the original registrant, inviting the Complainant to bid in an online auction for the Domain Name. It was apparent from the auction materials that the website had been set up to generate affiliate income and commissions for clicks and/or purchases by visitors to the website who were re-directed to the “www.dexclusive.com” website and offered Philip Stein watches and watch straps.
The Respondent was the successful bidder for the Domain Name and continues to operate the website as it was before the auction. The Respondent is therefore continuing to use the Domain Name to attract users, based on the Complainant’s reputation and goodwill, to redirect them to a third-party vendor to purchase competing products and then profit from the redirection in the form of commissions and affiliate income.
The Respondent has no rights or legitimate interests in respect of the Domain Name. He registered and is using the Domain Name in bad faith.
B. The Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name the Complainant must prove that:
(i) the 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 interest in respect of the Domain Name; and
(iii) the Domain Name has been registered in bad faith and is being used in bad faith.
A. Identical or Confusingly Similar
The Domain Name comprises the Complainant’s registered trademark TESLAR together only with the generic word “watch”. The “.com” domain suffix may be ignored for the purpose of determining identity or confusing similarity with the Complainant’s mark. The addition of “watch” does not detract from the distinctiveness of the TESLAR term. In fact, since TESLAR is registered in respect of electronic watches, it adds to the confusing similarity.
The Panel accordingly finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a non-exhaustive list of factors that if established may demonstrate rights or legitimate interests for the purpose of the Policy. The Complainant submits that none of them is applicable.
The Complainant asserts that the Domain Name is being used not in connection with a bona fide offering of goods or services, but to take advantage of the Complainant’s rights in its TESLAR trademark to attract visitors with a view to redirecting them to a site where they may purchase competing products. This is said not to be a legitimate, noncommercial or fair use but done with a view to commercial gain. The Complainant emphasizes that it has no connection with the Respondent and has not given the Respondent any permission to use its TESLAR mark.
The Panel agrees that it is most likely that visitors will be drawn to the Respondent’s website believing it to be an official website of the Complainant or that it is operated by an authorized reseller of the Complainant or otherwise with the authority of the Complainant. In fact, the visitor is offered competing products of a former licensee of the Complainant.
The Complainant has established a strong prima facie case that the Respondent has no rights or legitimate interests in the Domain Name and the Respondent has chosen not to answer the Complainant’s case.
In the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
On the same basis, the Panel is satisfied that the Respondent (and his predecessor) registered and has used the Domain Name for the purpose of attracting users to his 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 website or of a product or service on the website. The Panel therefore finds that the Respondent registered and is using the Domain Name in bad faith in terms of paragraph 4(b)(iv) of the Policy.
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 <teslar-watch.com> be transferred to the Complainant.
Dated: December 22, 2010