WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tally Weijl Holding AG v. ClickFindGet, Inc. / Private Proxy Registration
Case No. D2012-1422
1. The Parties
The Complainant is Tally Weijl Holding AG of Basel, Switzerland, of Switzerland, represented by Danckelmann u. Kerst Rechtsanwälte, Germany.
The Respondent is ClickFindGet, Inc. / Private Proxy Registration of Siesta Key, Florida, United States of America and Sarasota, Florida, United States, United States of America, respectively.
2. The Domain Name and Registrar
The disputed domain name <tally-weijl-online-shop.com> is registered with Wild West Domains, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2012. On July 13, 2012, the Center transmitted by email to Wild West Domains, LLC a request for registrar verification in connection with the disputed domain name. On July 14, 2012, Wild West Domains, 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. The Center sent an email communication to the Complainant on July 17, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date, the Center notified the Complainant of a formal deficiency with the Complaint. The Complainant filed an amendment to the Complaint on July 19, 2012.
The Center verified that the Complaint together with the amendment to 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 July 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 12, 2012. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on August 14, 2012.
The Center appointed James A. Barker as the sole panelist in this matter on August 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.
4. Factual Background
The Complainant is a women’s fashion business, founded in 1984. The Complainant is represented by over 760 stores in 31 countries.
The Complainant is the owner of a registered mark for TALLY WEIJL. That mark is registered in Germany since 2005, as a European Community mark, and also an international mark.
The disputed domain name was registered on December 12, 2011.
The Complainant provides a screenshot (although the date is not visible) of the website to which the disputed domain name referred. That website prominently features the Complainant’s marks, TALLY WEIJL together with the terms “Totally Sexy” in which the Complainant also claims trademark rights. That website relates to women’s fashion and carries the statement “Shop Online and the Tally Weijl Online Shop”, and also refers to links such as the “Tally Weijl Collection” and “Tally Weijl Stores”. It offers woman’s’ fashion items for sale.
5. Parties’ Contentions
The Complainant notes that the disputed domain name has been registered in the name of a privacy service. Referring to F. Hoffmann-La Roche AG v. PrivacyProtect.org, Domain Admin and Mark Sergijenko, WIPO Case No. D2007-1854, the Complainant says that the privacy service is the appropriate Respondent if it has not disassociated itself from the registration.
The Complainant says that the disputed domain name is almost identical to its TALLY WEIJL mark.
The Complainant says that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has found no relevant marks registered to the Respondent, and denies that the Respondent is commonly known by the disputed domain name. The Respondent has no contractual relationship with the Complainant.
The Complainant says that the disputed domain name has been registered and used in bad faith. The Respondent is using the disputed domain name to divert Internet users to its own website. The Respondent’s website is designed to mislead the public, by using the Complainant’s mark and slogans. The website also includes direct links to the Complainant’s own website, which intensifies the likelihood of confusion. The Respondent’s website also advertises the Complainant’s competitors. The Complainant claims that the Respondent is profiting from this conduct by ‘click through’ revenue and banner ads.
The Respondent did not reply to the Complainant’s contentions, nor make any other communication in connection with this case.
6. Discussion and Findings
To succeed under paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
The Complainant makes an argument in relation to each of these three elements. These three elements are discussed in turn as follows.
Before turning to those elements, the Panel notes that the Registrar has confirmed that the disputed domain name is registered in the name of Private Proxy Registration. This was the registrant also identified in the publicly available WhoIs details attached to the Complaint, as those details were on July 9, 2012. However, the initial Complaint incorrectly identified the Respondent as ‘ClickFindGet, Inc.’, seemingly because this was the entity through which the disputed domain name had been registered, as indicated in the WhoIs record at the time the Complaint was filed. In response to a deficiency notification, the Complainant added the named registrant ‘Private Proxy Registration’.
No other person or entity was identified in the case file as the Respondent. In the absence of any other information as to the identity of the Respondent, the Panel has treated Private Proxy Registration as the registrant. Even if that entity is, as its name suggests, a privacy service, there is no indication in the case file that it is not also the legitimate registrant of the disputed domain name. There was no information to indicate an alternative ‘underlying’ registrant. In somewhat similar recent circumstances, this Panel has found it appropriate to treat a privacy service as the legitimate registrant, in the absence of any other evidence to the contrary. See Alliance Laundry Systems LLC v. Private Registrations Aktien Gesellschaft, WIPO Case No. D2012-1137.
A. Identical or Confusingly Similar
There is no dispute that the Complainant has registered rights in its TALLY WEIJL mark. The Complainant uses that mark in connection with clothes and fashion accessories.
The primary difference between the Complainant’s mark and the disputed domain name is that the latter adds the words “on-line shop”. Those generic terms only serve to add a natural association with the Complainant’s mark. The Complainant’s mark is entirely incorporated in the disputed domain name. The whole incorporation of a mark in a domain name has been previously recognized as a sufficient basis for a finding of confusing similarity under the Policy. See e.g., Oki Data Americas, Inc v. ASD, Inc., WIPO Case No. D2001-0903; EAuto, L.L.C. v. EAuto Parts, WIPO Case No. D2000-0096.
For these reasons, the Panel finds that the Complainant has established its case in relation to this first element of the Policy.
B. Rights or Legitimate Interests
The Complainant has disclaimed the Respondent’s rights. The Respondent has provided nothing in response.
There is otherwise little evidence in the case file to indicate that the Respondent may have a right or legitimate interest in the disputed domain name. Instead, the preponderance of evidence indicates that the Respondent registered the disputed domain name to mislead Internet consumers searching for the Complainant. This is further discussed below in relation to bad faith. Such activity cannot form a basis for rights or legitimate interests.
The Panel finds that the Complainant has established the second element of the Policy.
C. Registered and Used in Bad Faith
There is strong evidence that the Respondent registered the disputed domain name to falsely present an appearance of being an authorized representative of the Complainant and, by so doing, to trade on the value of the Complainant’s mark. Under paragraph 4(b)(iv) of the Policy, bad faith may be found where there is evidence that, “by using the domain name, you [the Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
The disputed domain name is being used for apparent commercial gain – namely, the on-line retailing of products purporting to be those of the Complainant. The Respondent’s website indicates that some effort has been expended on seeking to present the Respondent’s website as legitimate, including through the reproduction of the Complainant’s mark on that site. However the Complainant provides evidence that the Respondent has no authorization to use its mark. The disputed domain name is, for the reasons set out above, confusingly similar to the Complainant’s mark. The appearance of the Respondent’s website appears designed to mislead Internet users as to the source, sponsorship, affiliation and endorsement of the Respondent’s website.
As such, the Panel finds that the Complainant has established this third element of the Policy.
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, <tally-weijl-online-shop.com>, be transferred to the Complainant.
James A. Barker
Dated: September 10, 2012