WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DBA LUX 1 v. ICS INC.
Case No. D2012-0122
1. The Parties
The Complainant is DBA LUX 1 of Luxembourg, Luxembourg represented by Cabinet Germain & Maureau, France.
The Respondent is ICS INC. of Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <shockabsorbersportsbra.net> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2012. On January 24, 2012, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On January 25, 2012, the Complainant filed an amended Complaint to include the registrant and contact information disclosed by the Registrar, which differed from the named Respondent and contact information in the Complaint. On January 26, 2012, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com 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 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 the Respondent of the Complaint, and the proceedings commenced on February 1, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 21, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 22, 2012.
The Center appointed Mihaela Maravela as the sole panelist in this matter on February 27, 2012. 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.
The Panel notes that the Registrar has confirmed the specific language of the registration agreement as English. In these circumstances, the Panel is satisfied that English is appropriate as the default language of the proceedings in accordance with paragraph 11 of the Rules.
4. Factual Background
The following facts have been alleged by the Complainant and not refuted by the Respondent.
The Complainant is a DBA LUX 1, a Luxembourg corporation, affiliated to the DBApparel Group, a market leader in design, manufacture and distribution of branded intimate apparel with a strong presence in France, Germany, Italy, the United Kingdom, South Africa, Belgium, United States of America (“US”) and emerging markets. Among the renowned brands distributed by DBApparel Group are DIM, PLAYTEX, LOVABLE, NUR DIE, ABANDERADO and WONDERBRA as well as SHOCK ABSORBER.
The Complainant is the owner of the registered trademark SHOCK ABSORBER which is used on a worldwide scale in relation with woman bras specifically designed for the practice of sports.
The disputed domain name was registered on January 14, 2012.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar with the Complainant’s earlier trademark SHOCK ABSORBER which is entirely reproduced therein. The addition of the descriptive terms “sportsbra” does not deprive the mark SHOCK ABSORBER of its distinctiveness and individuality, but furthermore enhances the risk of association in the public’s mind between the Complainant and the disputed domain name.
Also, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not legally or economically related to the Complainant and has never been authorized by the Complainant to use or register in any manner the name Shock Absorber Sports Bra, including as a domain name. The Respondent only redirects the disputed domain name to a parking page of sponsored links, for the purpose of economic gain.
The Complainant also argues that the Respondent registered and is using the disputed domain name to mislead visitors and to profit for commercial gain from confused visitors looking for the official website of the Complainant. The fact that the Respondent associated the Complainant’s mark SHOCK ABSORBER with the name “sports bra” in the disputed domain name and directed the same to a page pertaining to bras and lingerie induces that the Respondent had the Complainants trademark in mind when it registered the disputed domain name. Also, the disputed domain name resolves to a parking page providing sponsored links which represents bad faith use, especially when combined with other factors such as the Respondent preventing a trademark or service mark holder from reflecting its trademark in a corresponding domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Preliminary Issue: Respondent’s Identity
Initial WhoIs domain name search enquiries, submitted in evidence, yielded an apparent registrant name of Domain Admin, PrivacyProtect.org. Following the transmission of the Complaint by the Complainant to the Registrar, the Registrar disclosed by email to the Complainant the correct details of the registrant of the disputed domain name. Consequently, the Complainant amended its Complaint and named ICS INC. as the Respondent.
This suggests that a privacy service is in use, to shield the identity of the domain name registrant from the general public. In general there may be wholly legitimate reasons for a person wishing to protect its privacy by means of a proxy service. As it has been noted by previous UDRP panels, the use of privacy services is becoming an increasingly common occurrence, and is a trend which is likely to continue. Under such arrangements the name of the “true” underlying or beneficial registrant is typically not displayed in the registrar’s publicly accessible WhoIs database, and is instead disclosed (if at all) only after a complaint has been filed. At that point, some registrars, presumably in consultation with the privacy service, also apparently disclose the information directly in the WhoIs database.
Paragraph 1 of the Rules defines “respondent” as the holder of a domain-name registration against which a complaint is initiated.
As the Registrar Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com provided the information regarding the disputed domain name’s Registrant before the proceedings were formally notified (see also Hoffmann-La Roche Inc. v. Aditya Roshni, Web Services Pty, WIPO Case No. D2008-1086), ICS INC. is the domain name holder currently listed with the WhoIs database and the private protection service was disabled immediately after receiving the request for registrar verification, the Panel elects to treat ICS INC. as the Respondent in this case.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent has notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a), Rules).
Based on the methods employed to provide the Respondent with notice of the Complaint, the Respondent’s obligation under the registration agreement to maintain accurate and current contact information, the Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by the Center. See also Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814. The Panel is satisfied that the Complaint was properly notified to the Respondent, that ICS INC. is the registrant of the disputed domain name and therefore the Respondent.
In this respect it should also be emphasized that the Center must attempt reasonably to contact the Respondent, but can do no better than to send communications to the email and physical address on official record or provided in the Complaint. It is noted that the words “calculated to achieve actual notice” in paragraph 2 of the Rules do not demand proof of service. In the present case the Complaint and associated communications were sent to the physical and emails addresses available in the WhoIs data base and provided by the Registrant and the Registrar. The Panel is satisfied that the Center has exercised the utmost care and has fulfilled its obligations under paragraph 2 of the Rules. See also Sanofi-aventis v. Protected Domain Services and Jan Hus, Husiten, WIPO Case No. D2008-0463.
Because the Respondent has defaulted in providing a response to the allegations of the Complainant, the Panel will decide this administrative proceeding on the basis of the Complaint (Rules, paragraph 14(a)), and certain factual conclusions may be drawn by the Panel on the basis of the Complainant’s undisputed representations (id., paragraph 15(a) of the Rules, which reads as follows: “A Panel shall 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”).
Applied to this case, paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to the trademark in which the complainant has rights; and,
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and,
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
A panel must find that: (a) the Complainant has a trademark or service mark; and (b) that the domain name is identical or confusingly similar to that trademark or service mark.
Here, the Complainant has demonstrated ownership of the registered trademark SHOCK ABSORBER by submitting the community trademark no. 000024562 registered on March 23,1998 and the US trademark registration no. 2051795 registered on April 15, 1997. The registrations submitted predate the registration of the disputed domain name.
The question of confusing similarity for the purpose of the Policy requires a comparison of the disputed domain name with the trademark.
The Complainant’s trademark SHOCK ABSORBER is entirely incorporated in the disputed domain name <shockabsorbersportsbra.net>. The addition of the generic terms “sports bra” does not confer a distinctive character to the disputed domain name, in relation to the Complainant’s trademark. See DBA LUX 1 v. Speedeenames.com, Andrea Fletcher, WIPO Case No. D2011-1064 and decisions cited therein.
The addition of the generic top-level domain suffix (gTLD) “.net” is without legal significance from the standpoint of comparing the disputed domain name <shockabsorbersportsbra.net> to SHOCK ABSORBER since the use of a gTLD suffix is a technical requirement of a domain name registration, “.net” is one of only several such gTLDs, and “.net” does not serve to identify a specific enterprise as a source of goods or services. See also Ticketmaster Corporation v. DiscoverNet, Inc., WIPO Case No. D2001-0252; Williams-Sonoma, Inc. d/b/a Pottery Barn v. John Zuccarini d/b/a Country Walk, WIPO Case No. D2002-0582 concerning the inclusion of a gTLD.
In the absence of any argument to the contrary from the Respondent, this Panel concludes that, on balance, the disputed domain name is confusingly similar to the Complainant’s trademarks. See also Reuters Limited v Global Net 2000, Inc, WIPO Case No. D2000-0441.
The Panel therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a disputed domain name:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of WIPO UDRP panels concerning the burden of establishing rights or legitimate interests in respect of the domain name is as follows:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore 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, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.” (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), paragraph 2.1.).
In the present case the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests. (See, e.g. Barbara Brennan Inc. v. Texas International Property Associates, WIPO Case No. D2008-0351; Sanford Winery Company v. Matt Geiser, WIPO Case No. D2008-0210). The Complainant alleges that the Respondent is deliberately trying to gain unfair benefit of its reputation by using the Complainant’s trademarks to divert Internet users to a parking website with links leading to competitors’ commercial websites.
By not submitting a Response, the Respondent has failed to invoke any circumstances, which could demonstrate any right or legitimate interest in the disputed domain name. The only evidence in this connection is that provided in the Complaint, and that which is self-evident from the website to which the disputed domain name refers.
“The registration of domain names in connection with portal websites (otherwise referred to as “directory”, “parking” or “pay-per-click (PPC) landing” sites) has been the subject of numerous prior decisions under the Policy. The incidence of these types of websites has greatly increased in recent years. Such websites typically offer a list of automatically generated links. Also typically, the search function on such websites provides results only for search terms for which particular advertisers have paid.” See State of Florida, Florida Department of Management Services v. Bent Pettersen, WIPO Case No. D2008-0039. “The reason these pages are structured in this way is that, each time an internet user clicks on a listed link, it creates an opportunity for the owner of the PPC landing page to receive a small (typically automated) payment from the advertiser in consideration for having delivered the Internet user to the advertiser’s web page.” See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.
The use of a domain name for a parking site with advertising revenue generating sponsored links may be permissible in some circumstances within the meaning of paragraph 4(a)(ii) of the Policy. See Grundfos A/S v. Bridge Port Enterprises Limited, WIPO Case No. D2008-1263. For example, if a respondent intends to profit from the descriptive nature of the word or words in the domain name without intending to take advantage of a complainant’s rights and reputation in that term, then it may have a legitimate interest in the domain name (see paragraph 2.6. of the WIPO Overview 2.0). On the other hand, if the domain name in question was chosen because of the similarity to a name in which a complainant has rights and in order to capitalize or otherwise take advantage of that similarity, then such registration and use does not provide the registrant with a right or legitimate interest in the domain name (see, for example, Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267).
In this case, the use of the disputed domain name is made in connection with a search engine displaying links to third parties’ (mainly Complainant’s competitors) websites promoting goods similar to the Complainant’s. In this Panel’s view that does not constitute a nominative fair use; rather, “it appears to constitute deceptive bait and switch advertising practices” as it was held by previous UDRP panels (see Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). See also, DBA LUX 1 v. Speedeenames.com, Andrea Fletcher, supra, and decisions cited therein.
In this Panel’s view, the evidence in this case squarely supports a similar finding. The Respondent’s registration and use of the disputed domain name appears to have been based on the trademark value of the Complainant’s mark. A quick scan of the disputed domain name provides links to third parties’ websites, offering woman underwear, intimate products. As such, the links relate to the trademark value of the Complainant’s mark (i.e. its activity in the woman underwear field).
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
To fulfill the third requirement, the complainant must prove that the domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out a number of circumstances that shall, in particular but without limitation, be evidence of registration and use of a domain name in bad faith:
(i) Circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark, or to a competitor of the complainant, for a valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name.
(ii) Circumstances indicating that the respondent has registered the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct.
(iii) Circumstances indicating that the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor.
(iv) By using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to his 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 said website location or of a product or service on that website location.
The case file contains evidence showing that the disputed domain name <shockabsorbersportsbra.net> resolves to a website that contains links to some of the Complainants competitors (for example Orcanta, Aubade), which proves that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark SHOCK ABSORBER as to the source, sponsorship, affiliation or endorsement of the website. The disputed domain name appears designed to attract Internet users who are looking for SHOCK ABSORBER goods, appears to cause confusion with the Complainant’s marks and websites, appears to disrupt the Complainant’s business by diverting consumers away from the Complainant’s websites, and do all of these things for commercial gain because the Respondent profits from the PPC revenue generated by these websites. See also Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.
For all these reasons, the Panel concludes that the Respondent must have been aware of the Complainant’s trademark at the time it registered the disputed domain name. Accordingly, and because the Respondent has also used the disputed domain name in bad faith to attract Internet users to its PPC landing page pursuant to paragraph 4(b)(iv) of the Policy, the Panel finds that the Complainant has satisfied its burden of proving that the Respondent registered and used the disputed domain name 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 disputed domain name <shockabsorbersportsbra.net> be transferred to the Complainant.
Dated: March 12, 2012