WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gudrun Sjödén Design Aktiebolag v. Domain Admin, Private Registrations Aktien Gesellschaft / PrivacyProtect.org
Case No. D2012-1903
1. The Parties
Complainant is Gudrun Sjödén Design Aktiebolag of Stockholm, Sweden, represented by DIPCON AB, Sweden.
Respondent is Domain Admin, Private Registrations Aktien Gesellschaft of Kingstown, Saint Vincent and the Grenadines / PrivacyProtect.org of Nobby Beach, Australia.
2. The Domain Name and Registrar
The disputed domain name <wwwgudrunsjoden.com> (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 26, 2012. On September 26, 2012, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On September 26, 2012, the Registrar transmitted to the Center by e-mail its verification response registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an e-mail communication to Complainant on October 1, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. On October 2, 2012, Complainant indicated that it chose not to file an amendment to the Complaint. On October 2, 2012, the Center acknowledged receipt of Complainant’s email communication, noting that any resultant (or related) issues of proper Respondent identity would need to be considered at the discretion of the (to be appointed) panel in due course, and that the Center would nevertheless provide a copy of the Complaint both to the Respondent as named in the Complaint, and to the registrant contact details disclosed by the Registrar.
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 Respondent of the Complaint, and the proceedings commenced on October 5, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 25, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 26, 2012.
The Center appointed Robert A. Badgley as the sole panelist in this matter on November 1, 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 is a Swedish company named for fashion designer Gudrun Sjödén. She has operated the Complainant business since 1976. Complainant has retail stores and a mail order business that sells designer clothing, accessories, and home textile equipment. Complainant’s stores are located in Sweden, Norway, Denmark, and Germany.
Complainant operates its main website at “www.gudrunsjoden.com”, and owns numerous domain names incorporating the company name. Complainant holds several trademark registrations for the mark GUDRUN SJODEN in various jurisdictions and for various classes. Some marks include the umlaut above the “o” and/or the accent aigu above the “e” and some do not.
The Domain Name was first registered on January 1, 2006, and it appears that ownership of the Domain Name changed hands on February 5, 2012. The Domain Name is currently registered to an entity called Domain Admin, Private Registrations Aktien Gesellschaft, although at the time the Complaint was filed it was registered to another entity (PrivacyProtect.org) which also appears to afford domain name registration privacy to its registrant clients. In any event, no one, either the privacy service itself or the underlying client, has come forward to answer this Complaint. As such, the Panel need not and does not distinguish between the current registrant and whoever may be “behind” the registration of the Domain Name.
The Complainant has submitted evidence that the website to which the Domain Name resolves is a basic portal page (in Swedish) featuring several hyperlinks to websites that offer clothing for sale, in direct competition with the goods offered by Complainant under the mark GUDRUN SJODEN. It is alleged that Respondent receives per-click revenue from this website.
Complainant sent Respondent a cease-and-desist letter on June 14, 2012. Respondent did not reply.
5. Parties’ Contentions
The salient facts alleged by Complainant are set forth in the previous section, and the relevant arguments raised by Complainant will be set forth below in the appropriate places of the Discussion and Findings section.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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
There is no dispute that Complainant holds longstanding rights in the mark GUDRUN SJODEN (either with the accent marks or without) through registration and through use, some of which is conducted on the Internet with a website whose domain name does not include the accent marks. The Domain Name incorporates Complainant’s distinctive mark in its entirety, and appends the letters “www” to the beginning of the mark to form the Domain Name. This is a classic form of typo-squatting, in which the Second Level Domain includes the “www” rather than being separated from the “www” by a period. There are many prior decisions under the Policy holding that a “wwwmark.com” domain name is held to be confusingly similar to the mark in question. See, e.g., Pig Improvement Company, Inc. v. Platinum Net, Inc., WIPO Case No. D2000-1594 (“[t]he addition of ‘www’ before another term in the SLD is nothing more than an obvious attempt to trade on the value of a mark or domain name of another by positioning oneself to take advantage of typographical errors”). This case joins that long list.
Moreover, in the Panel’s view, the absence of an umlaut or accent mark in the Domain Name does not diminish the confusing similarity between Complainant’s distinctive mark and the Domain Name.
Accordingly, the Panel finds that Policy paragraph 4(a)(i) is satisfied.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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.
Complainant bears the burden of proof on the “rights or legitimate interests” issue (as it does for all three elements of the Policy). Louis De Bernieres v. Old Barn Studios Limited, WIPO Case No. D2001-0122. Nevertheless, the panel in PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor, WIPO Case No. D2003-0174, correctly observed: “A respondent is not obliged to participate in a domain name dispute proceeding, but its failure to do so can lead to an administrative panel accepting as true the assertions of a complainant which are not unreasonable and leaves the respondent open to the legitimate inferences which flow from the information provided by a complainant.” As noted above, Respondent did not file a Response and hence did not effectively rebut any of Complainant’s assertions.
There is no evidence that Respondent has ever been authorized to use Complainant’s mark in a domain name or otherwise. Likewise, there is no evidence that Respondent is commonly known by the Domain Name, or has made substantial preparations to use the Domain Name in connection with a bona fide offering of goods or services. Rather, Respondent’s website contains links to competitors of Complainant,.
Accordingly, the Panel finds that Policy paragraph 4(a)(ii) is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel finds bad faith under Policy paragraph 4(b)(iv). Respondent’s site contains links to commercial sites of third parties, some of whom compete with Complainant. It is fair to infer that Respondent derives financial gain via click-through revenues. The Panel therefore concludes that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion between Complainant’s mark and the Domain Name.
Accordingly, the Panel finds that Policy paragraph 4(a)(iii) is satisfied.
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 <wwwgudrunsjoden.com> be transferred to Complainant.
Robert A. Badgley
Date: November 15, 2012