WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Incase Designs Corp. v. Naronglit Sreetana/ Domains by Proxy, Inc.
Case No. D2011-1206
1. The Parties
The Complainant is Incase Designs Corp. of Irwin dale, California, United States of America, represented by Sideman & Bancroft LLP, United States of America.
The Respondent is Naronglit Sreetana/ Domains by Proxy, Inc. of Bangkok, Thailand and of Scottsdale, Arizona, United States of America, respectively.
2. The Domain Name and Registrar
The disputed domain name <incaseneoprenesleeve.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 14, 2011. On July 15, 2011, the Center transmitted by email to Go Daddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On July 20, 2011 GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name(s) which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 25, 2011 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 amended Complaint on July 27, 2011.
The Center verified that 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 the Respondent of the Complaint, and the proceedings commenced on July 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 17, 2011. The Respondent did not submit any formal response, but an e-mail, dated July 25, 2011, proposing the transfer of the disputed domain name.
On August 19, 2011, having received confirmation from the Complainant that it did not wish to suspend proceedings to explore possible settlement options with the Respondent, but rather wished to proceed to a decision, the Center confirmed that it would accordingly proceed to appointment of a panel.
The Center appointed Fleur Hinton as the sole panelist in this matter on August 26, 2011. 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 began business in 1997 in the design, manufacture and sale of products for the carrying of electronic goods such as mobile phones, Iphones, and various computers. It has registered the trade mark INCASE in many countries around the world including the United States and its earliest registration of INCASE as a trade mark dates from 1998. The Complainant became aware of the Respondent’s use of the disputed domain name <incaseneoprenesleeve.com> on June 7, 2011 when the Complainant’s counsel undertook a search of domain names and discovered it. The Complainant offers a product called the neoprene sleeve as a cover for various APPLE products. In addition, the Respondent was using the trade mark INCASE in respect of offerings of products throughout its website including offerings of the Complainant’s own products and links to those products.
5. Parties’ Contentions
The Complainant argues that Respondent’s use of the disputed domain name entirely encompasses the Complainant’s registered trade mark for INCASE and that such use causes a likelihood of confusion. The Complainant refers to Motorola Inc v NewGate Internet Inc WIPO Case No. 2000-0079. In that case the Panel found that use of a domain name wholly encompassing another party’s trade mark shows a lack of bona fides. T.NT. Holdings v Sylvia Bona WIPO Case No. D2008 -1070 is referred to show that such use can cause confusion among customers and that it is precisely that sort of confusion which trade mark law is designed to prevent. The Complainant argues that the fact that the expression “neoprene sleeve” is used enhances the likelihood of confusion.
The Complainant argues that the Respondent has no right nor legitimate interests in the use of the disputed domain name and refers to paragraph 4(c) of the Policy. In that paragraph it is said that rights or legitimate interests may be demonstrated by a bona fide offering of goods by the website bearing the disputed domain name. The Complainant submits that no such bona fide offering is being made. It also submits that it is likely that the Respondent is earning pay by click advertising revenue on the basis that it is common practice when clicking on a link on a website which takes the website visitor to another item. Further, the Respondent has not entered any disclaimers on the website in order to distinguish itself from the Complainant.
The Complainant submits that the disputed domain name was registered, and is being used by the Respondent, in bad faith. The Complainant argues that at the time at which the disputed domain name was registered, February 17, 2011, the Complainant’s trade mark INCASE had been in use since its business commenced in 1997 both as a trade mark and as the name of its business. For that reason, it is highly unlikely that the Respondent did not register the disputed domain name without being aware of the Complainant’s business and the goods which it offers under its trade mark INCASE in the course of its business.
It further submits that the Respondent’s use of the disputed domain name for a website which functions as a “parking place”, directing visitors to the Complainant’s competitors’ websites is strong evidence of bad faith and refers to Groupe Canal+ S.A.v. CDN Properties Incorporated, WIPO Case No. D2010-1286 and Hoffmann La Roche Inc v. Kevin Chang, WIPO Case No. D2008-1344 which supports bad faith under paragraphs 4(b) (iii) and (iv). Further, the fact that the Respondent’s webpage contains advertising links as well as advertisements for competing products supports an inference of the Respondent’s “cash parking” for monetary reward and that, therefore, the Respondent’s use is for monetary gain. The Complainant refers to Merck Sharp & Dohm Corp v Moniker Privacy Services WIPO Case No. D2010-1286.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to be successful in having a domain name transferred or cancelled, the Complainant must satisfy the Panel that all three elements of the UDRP Policy have been satisfied, that is, that:
i. the disputed domain name(s) are identical or confusingly similar to a Trade mark 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(s); and
iii. the domain name(s) has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant’s trade mark INCASE is totally encompassed within the disputed domain name. Further, the disputed domain name also contains the exact description of one of the products sold by the Complainant, namely the expression “neuroprene sleeve”. The fact that the disputed domain name does include the entirety of the trade mark INCASE is of itself sufficient to result in a finding that the Complainant had established the first criterion of the Policy. The additional factor, that the Respondent has chosen the Complainant’s exact product description, when that product description is unusual, makes the situation even plainer. The Panel finds that the disputed domain name is confusingly similar to the INCASE trade mark.
B. Rights or Legitimate Interests
The Respondent has used a domain name which is confusingly similar to the Complainant’s trade mark. The Complainant states that it has not given any licence or authority to the Respondent to permit him to use the disputed domain name. It seems likely that the Respondent is engaged in generating income for himself by pay per click advertsing. Further, the Respondent has not demonstrated any right or legitimate interest in the domain name.
Whilst the onus of proof is on the Complainant to establish its case under the three criteria set out in the UDRP Policy referred to above, the consensus view expressed in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1 is that, once the Complainant has established a prima facie case in relation to this element, the burden of proof shifts to the Respondent. If the Respondent fails to produce either appropriate allegations or evidence, the Complainant is found to have established its case. The Panel finds that the Respondent has no right nor legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
When the disputed domain name was lodged, the Complainant had been using its trade mark IN CASE since 1997 and has it registered since 1998. As the Respondent’s website uses both the trade mark and offers goods which are the Complainant’s goods or similar goods manufactured by competitors, the Panel does not believe that the decision to register the disputed domain name was made without being fully aware of the Complainant and its activities.
The evidence lodged by the Complainant shows that visitors to the Respondent’s website are invited to click on links to be taken to websites unconnected with the Complainant. Paragraph 4 (b) (iv) of the Policy states that bad faith exists where use of the disputed domain name is an attempt to attract commercial gain to the Respondent’s website – see Lyonnaise de Banque v. Richard J., WIPO Case No. D2006-0142.
The Panel finds that the disputed domain name was registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <incaseneoprenesleeve> be transferred to the Complainant.
Dated: September 11, 2011