WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Totes Isotoner Corporation v. tucaminoalexito.biz
Case No. D2012-0870
1. The Parties
Complainant is Totes Isotoner Corporation of Cincinnati, Ohio, United States of America, represented by Frost Brown Todd LLC, United States of America (“U.S.”).
Respondent is tucaminoalexito.biz of Leon, Guanajuato, Mexico.
2. The Domain Name and Registrar
The disputed domain name <totesumbrellas.org> is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2012. On April 24, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On April 24, 2012, GoDaddy.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. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on April 26, 2012.
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 April 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 17, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 18, 2012.
The Center appointed Roberto Bianchi as the sole panelist in this matter on May 25, 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.
4. Factual Background
Complainant, its predecessors in interest and related companies have been engaged in the business of manufacturing and distributing footwear, weather-related products and accessories for over sixty years. Since the production of its first rain boot in 1942, Complainant has expanded its line of footwear and weather-related products and accessories, such as umbrellas.
Complainant owns several U.S. trademark registrations, inter alia,
TOTES, U.S. Trademark Registration No. 1149822, registered March 31, 1981, for “umbrellas” of International Class 18 (first use July 1970) and “boots and overshoes” of International Class 25 (first use June 1948); and
TOTES (stylized), U.S. Trademark Registration No. 0925164, registered December 7, 1971, for “umbrellas” of International Class 18 (first use July 29, 1970).
Since 1995, Complainant owns and operates the domain names <totes.com> and <totes-isotoner.com>.
On September 12, 2011, Respondent registered the disputed domain name.
On February 27, 2012, Complainant’s counsel sent Respondent a letter by email demanding that Respondent cease use and ownership of the disputed domain name and transfer it to Complainant. On March 12, 2012, Complainant’s counsel sent Respondent a follow up letter by email, reiterating Complainant’s previous demands. At the time of submitting the Complaint, Complainant had not received a reply to its demands.
As confirmed by the Panel during its visit to “www.totesumbrellas.org” conducted on June 7, 2012, the disputed domain name resolves to a website with a main page entitled “TOTES UMBRELLAS” and showing the legend “Find the Best Deals on Totes Umbrellas”.
5. Parties’ Contentions
In its Complaint, Complainant contends as follows:
Respondent intended to capitalize on Complainant’s TOTES trademark by registering a domain name that includes the well-known TOTES mark with the intent to profit from the resulting confused traffic that gets misdirected to that domain name. If a domain name incorporates a mark in its entirety, it is confusingly similar to that mark despite the addition of other words. The disputed domain name incorporates the TOTES mark in its entirety, only adding the descriptive term “umbrellas.” Moreover, the addition of this descriptive term to Complainant’s trademark that is registered for and used in connection with the promotion of competitive umbrellas only increases confusion to those consumers looking for TOTES umbrellas on the Internet.
Respondent’s name does not include the term “Totes” and Respondent is not a licensee or otherwise affiliated with Complainant. The disputed domain name was registered and is being used in bad faith, with a clear intent to profit from confusion. Respondent is not using the disputed domain name for a legitimate, noncommercial or fair use; nor is Respondent using the disputed domain name in connection with a bona fide offering of goods or services. The TOTES mark is a well-known mark and the provision of a site that purports to provide the best deals for TOTES branded umbrellas while discussing and approving of umbrellas competing with Complainant is not a noncommercial, fair use. Moreover, it can be reasonably inferred from the evidence submitted that Respondent intended the website at the disputed domain name to contain pay-per-click links, which is not a bona fide use of the disputed domain name.
Respondent is using the TOTES trademark in an attempt to generate revenue in a pay-per-click advertising scheme or affiliate program. This is the type of use that has been recognized as a classic illustration of the conduct condemned by paragraph 4(b)(iv) of the Policy and constitutes bad faith registration and use. Even if Respondent claims it is not benefiting directly from the pay-per-click scheme, such a defence is inconsequential because, even if true, it does not obviate the fact that Respondent has no rights or legitimate interests in the disputed domain name and that Respondent’s use and registration is in bad faith.
Respondent’s use of the disputed domain name containing Complainant’s marks merely to capture customers of Complainant who are seeking TOTES umbrella products is neither a legitimate, nor good faith use of the disputed domain name. Using a domain name to intentionally attract, for commercial gain, Internet users to a website by creating confusion with a complainant’s mark, is evidence of bad faith registration and use under the Policy, Paragraph 4(b)(iv).
Respondent registered the disputed domain name in September 2011, long after the TOTES mark had become a famous trademark of Complainant, and after Respondent knew of Complainant’s superior and prior rights. The content associated with the disputed domain name has been tailored to relate to Complainant’s business, which demonstrates Respondent’s awareness of Complainant’s prior rights.
Respondent did not reply to Complainant’s contentions, and is in default.
6. Discussion and Findings
Under Policy, paragraph 4(a), a complainant must make out its case 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 interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has evidenced that it has rights in the TOTES trademark. See “Factual Background” above.
The disputed domain name incorporates the TOTES mark in its entirety, only adding the generic term “umbrellas” and the generic Top Level Domain (gTLD) “.org”. It is well established that the addition in a domain name of a generic or descriptive term and a gTLD to a mark is insufficient to distinguish the domain name from the mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) paragraph 1.9: (“1.9 […] The addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Panels have usually found the incorporated trademark to constitute the dominant or principal component of the domain name.”).
Moreover, in this case the inclusion of the term “umbrellas” reinforces the impression of association of the disputed domain name with Complainant’s U.S. Trademarks Reg. No. 1149822 and Reg. No. 0925164, covering precisely umbrellas. See Swarovski Aktiengesellschaft v. Christine Jil, WIPO Case No. D2011-2241 (“The addition of the terms “crystal” and “outlet” as suffixes to the SWAROVSKI mark in the Domain Name does not lessen the confusing similarity between the mark and Domain Name. The Complainant manufactures crystal jewelry and the use of the word “crystal” along with the SWAROVSKI mark is obviously intended to create an association with the Complainant and its business, strengthening rather than weakening the confusing similarity between mark and Domain Name.”).
The Panel concludes that the disputed domain name is confusingly similar to Complainant’s TOTES trademark.
B. Rights or Legitimate Interests
Complainant contends that Respondent’s name does not include the term “totes” and that Respondent is not a licensee or an affiliate of Complainant. Complainant adds that Respondent is not using the disputed domain name for a legitimate, noncommercial or fair use; nor is Respondent using the disputed domain name in connection with a bona fide offering of goods or services. The TOTES mark is a well-known mark and Respondent’s website at the disputed domain name purports to provide the best deals for Totes umbrellas while discussing and approving of umbrellas competing with Complainant’s products. This is not a noncommercial or fair use.
Taken together, these contentions and supporting evidence are apt to constitute a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. It is the consensus view of UDRP panels that once a complainant makes a prima facie case, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. See paragraph 2.1 of the WIPO Overview 2.0.
Respondent is in default and has not submitted any comments or evidence in its favor. Accordingly, the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
As confirmed by the Panel during its visit to the “www.totesumbrellas.org” website, the disputed domain name resolves to a website with a main page entitled “TOTES UMBRELLAS” and showing the legend “Find the Best Deals on Totes Umbrellas”. In absence of any explanation from Respondent, one cannot but conclude that it knew of Complainant and its Totes umbrellas before it registered the disputed domain name, and that Respondent has built a website with the purpose of attracting Internet users looking for Complainant and its well-known Totes umbrellas.
Complainant has also shown that Respondent has attempted to have Google Ads loaded onto the website associated with the disputed domain name. Respondent apparently did not succeed in having those ads operative on the website. However, the Policy does not require that the registrant of a domain name succeed in actually obtaining profit from the unauthorized use of the mark of a complainant in a domain name. It suffices that, such as in the present case, Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s TOTES mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. This is a circumstance of bad faith registration and use of the disputed domain name pursuant to Policy paragraph 4(b)(iv).
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 <totesumbrellas.org> be transferred to Complainant.
Dated: June 8, 2012