WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Blick Art Materials, LLC v. ORM Ltd
Case No. D2015-1465
1. The Parties
The Complainant is Blick Art Materials, LLC of Illinois, United States of America (“United States” or “USA”), represented by Quarles & Brady LLP, United States of America.
The Respondent is ORM Ltd 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 <blickartsupply.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
A Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 19, 2015 against Contact Privacy Inc. of Toronto, Canada, the registrant named in the WhoIs information then available to the Complainant. On August 19, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 19, 2015, the Registrar 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 August 27, 2015 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 August 28, 2015 naming both the original proxy registrant and the underlying registrant as advised by the Registrar. The Panel has determined that the Complaint should proceed in the name of the true underlying registrant and accordingly has removed the name of the proxy service from the proceedings.
The Center verified that the Complaint together with the amended Complaint (hereafter called 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 2, 2015. In accordance with the Rules, paragraph 5, the due date for a Response was September 22, 2015. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on September 24, 2015.
The Center appointed Philip N. Argy as the sole panelist in this matter on October 5, 2015. 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.
All other administrative requirements appear to have been satisfied.
4. Factual Background
The following facts, taken from the Complaint, remain uncontested.
The Complainant is the owner of the trademark BLICK in the USA, which was first registered on June 10, 2003 by a predecessor in title and assigned to the Complainant on December 29, 2013. It sells art materials and supplies under that mark in retail stores at multiple locations in 24 states of the USA plus the District of Columbia and on its website through the latter of which it has developed significant reputation beyond the brick and mortar stores it operates.
The Complainant sells over 30,000 products such as paint, brushes, canvases, paper pads and writing instruments to professional artists, students and teachers throughout the USA. Its sales for 2014 were in excess of USD 173 million.
The Disputed Domain Name was first registered on June 4, 2012.
5. Parties’ Contentions
The Complaint is based on three grounds, namely, that the Disputed Domain Name is confusingly similar to Complainant’s BLICK trademark, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and that the Disputed Domain Name was registered and is being used in bad faith.
In relation to the first limb the Complainant, apart from reciting the above facts, advances little argument beyond baldly asserting that “long before the acts of Respondent complained of herein, and by virtue of Complainant’s extensive marketing of its BLICK goods and services, Complainant’s BLICK mark has become recognized by consumers throughout United States as designating Complainant as the source of Complainant’s products”.
In support of the second limb of the Policy the Complainant submits that “there is no evidence that Respondent used, or made preparations to use, [the Disputed Domain Name] in connection with a bona fide offering of goods or services”. It notes that the Respondent is not, and never has been, authorized to use the Complainant’s BLICK trademark and asserts that it is not making a legitimate noncommercial or fair use of the Disputed Domain Name, that it registered the Disputed Domain Name in order to misleadingly divert consumers by attracting them through the confusingly similar domain name and then collecting revenue by featuring “sponsored” links on its search engine, and by offering to sell the Disputed Domain Name. The Complainant furthermore asserts that the Disputed Domain Name is not the name of the Respondent, nor can it be considered its business name or common trade name, and submits that there is no legitimate basis for Respondent’s registration of the Disputed Domain Name. It concludes by reciting “upon information and belief, Respondent obtained the [Disputed Domain Name] with the full knowledge of Complainant’s long prior use and ownership of Complainant’s BLICK mark”.
In support of its argument under the third limb of the Policy the Complainant alleges that the Respondent registered “the web site” with “the intent of creating a commercial webpage with sponsored links that misuses Complainant’s famous trademark by taking advantage of Internet users who will type the particular goods or services they are seeking directly into their browsers rather than using an Internet search engine”. The Complainant then alleges “upon information and belief, Respondent has registered the [Disputed Domain Name] primarily for the purpose of disrupting the business of Complainant. By registering the [Disputed Domain Name] Respondent is not allowing Complainant to use the [Disputed Domain Name] to advertise, promote and sell its products”. The Complaint continues: “Respondent’s use of the [Disputed Domain Name] is used to attract consumers for commercial gain by deceptively leading consumers to believe that Respondent is affiliated in some way with Complainant or that its website is sponsored, approved or endorsed by Complainant. The [Disputed Domain Name] is merely used to advertise sponsored links related to art supplies and improperly implying an affiliation with Complainant. Previous WIPO cases have found bad faith on part of Respondent where domain names were used as a parking page with affiliate links”, citing Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267 in support. Complainant then submits that Respondent has a history of registering domain names containing the trademarks (or confusingly similar variations thereof) of others. Complainant alleges that “previous WIPO cases have ordered the cancellation or transfer of domain names registered by Respondent in bad faith”, citing in support Maker Studios, Inc. v. ORM LTD / Contact Privacy Inc. Customer 0137258808, WIPO Case No. D2014-0918 and Thierry Mugler v. ORM LTD / Contact Privacy Inc., WIPO Case No. D2014-0615.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with the Policy and the Rules the Complainant bears the onus of proving that each of the grounds of the Policy have been made out. The fact that Respondent has not filed a Response does not automatically result in a decision in favour of the Complainant.
As a preliminary matter the Panel observes that the Complaint is relatively weak. No matter how self-evident to a complainant, it is inappropriate to assume that a UDRP panel does not need to be persuaded that the grounds of the Policy have been made out, by cogent argument and submissions linked to evidence provided or otherwise publicly available and drawn to the panel’s attention. However, a respondent’s failure to file a Response may result in a UDRP panel drawing certain inferences from the complainant’s evidence; here the Panel is minded to accept the Complainant’s allegations and submissions except where they are contradicted by the record, principle, law or logic. This is consistent with the approach adopted by many UDRP panels. See, e.g. Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.
A. Identical or Confusingly Similar
By virtue of a series of formal trademark assignments the Complainant came to own the BLICK trademark with effect from December 29, 2013. Curiously, the footnote on the Complainant’s website at “www.dickblick.com” does not seem to have been updated to take account of the assignments, with ownership of the BLICK trademark still attributed to one of the Complainant’s predecessors in title. For the purposes of the Policy the Complainant need only show that the Disputed Domain Name is identical or confusingly similar to a trademark in which it has rights. There is no question that the Complainant, as the current proprietor of record, has rights in the registered trademark BLICK. The evidence shows that it has rights in a number of other registered trademarks as well, but the Complaint relies solely on its BLICK mark in support of its contentions. Beyond an assertion that it is so, no argument has been addressed to the Panel in the Complaint explaining how the Complainant says that the Disputed Domain Name is confusingly similar to the BLICK trademark. Nevertheless, the Panel notes that the Disputed Domain Name comprises the Complainant’s BLICK trademark followed by the ordinary English words “art supply”, which are apt to describe the Complainant’s business and the nature of the products which it sells. Accordingly the suffixed words cannot operate to remove any confusion generated by the use of the Complainant’s otherwise distinctive trademark in the Disputed Domain Name. Nor does the gTLD “.com” have the capacity to do so. On balance the Panel concludes that the Disputed Domain Name <blickartsupply.com> is confusingly similar to the Complainant’s BLICK trademark for the purposes of the first limb of the Policy.
B. Rights or Legitimate Interests
In the absence of any Response there is no factual or logical basis for the Panel to reject the Complainant’s prima facie arguments set out above and, accordingly, the Panel is inclined to accept them. The Panel formally finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
C. Registered and Used in Bad Faith
The Disputed Domain Name was created on June 4, 2012. At that time the BLICK trademark was owned by Dick Blick Holdings, Inc. As adverted to earlier, the footnote on the Complainant’s website still attributes ownership of the trademark to that corporation. No evidence has been provided of the extent of the use of the BLICK trademark during the nine years between when it was registered in June 2003 and when the Disputed Domain Name was created in June 2012. However, the Panel is entitled to assume a progressive increase in reputation and extent of use to achieve the 2014 turnover referred to in the Complaint. Furthermore, there is no explanation of why the Complainant or one of its predecessors in title did not register the Disputed Domain Name during the nine years before it was created. The Panel assumes that BLICK is the last name of a person originally connected with the art supply business now carried on by the Complainant. This presumably also explains why the Complainant’s website address remains “www.dickblick.com”. These factual matters might plausibly have formed the basis of a credible Response had the Respondent chosen to file one, but even absent a Response they do cause the Panel to hesitate when forming a view as to whether the Disputed Domain Name was registered in bad faith.
Whilst the assignment agreements make clear that use of the BLICK trademark in the conduct of the art supply business by the Complainant’s predecessors in title generated goodwill which is now reposed in the Complainant, it is a little disingenuous for the Complainant to assert that the Respondent’s conduct in June 2012 manifested bad faith toward the Complainant who did not acquire the BLICK trademark until 22 months later. This is not a case where a long-standing business merely changed its name. The evidence shows that the Complainant is the third entity in succession to own the BLICK trademark, although successive owners’ names all include the word “Blick”, suggesting some common affiliation. It should not be left to the Panel to pick through the evidence and deduce how the current state of affairs came to exist, especially where the course that was taken may have relevance to the weight accorded to the Complainant’s submissions.
Nor can the Panel accept that the Respondent registered the Disputed Domain Name primarily for the purpose of disrupting the business of the Complainant. since there is no evidence that the Complainant was carrying on any relevant business at the time the Disputed Domain Name was registered. In any event, t To invoke paragraph 4(b)(iii) of the Policy the Complainant would have to show that it is a competitor of the Respondent, and there is no submission to that effect nor evidence to support any such submission. Indeed the evidence shows that the Respondent has parked the Disputed Domain Name and is simply generating click through revenue from it. Similarly the Panel cannot accept the Complainant’s submission that, by registering the Disputed Domain Name, the Respondent “is not allowing” the Complainant to use it to advertise, promote and sell its products. Whilst it is plainly the case that the Complainant is presently unable to use the Disputed Domain Name, in the absence of some evidence and submissions on the point the Panel is not prepared to find that the Respondent had the Complainant in mind 18 months before the Complainant acquired the BLICK trademark. It may well be the case that the Respondent registered the Disputed Domain Name in order to prevent the (then or present) owner of the BLICK trademark to reflect it in a domain name, and the Complainant has cited two cases which suggest that the Respondent has a practice of doing so. If that is what the Complainant intended to put to the Panel it has done so too obliquely. If the Complainant and its predecessors in title are treated as one organization operating the art supply business presently carried on by the Complainant, there is more scope for the Complainant to mount that argument. But there being no submission to that effect the Panel is not prepared to do the Complainant’s job for it.
Next the Complainant submits that the Respondent’s use of the Disputed Domain Name is “used” to attract consumers for commercial gain by deceptively leading consumers to believe that the Respondent is affiliated in some way with the Complainant. Assuming in favour of the Complainant that this is a submission intended to invoke paragraph 4(b)(iv) of the Policy, the Complainant is on firmer ground. The Panel is of the view that by using the Disputed Domain Name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website to which the Disputed Domain Name resolves, by creating a likelihood of confusion with the Complainant's BLICK mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service to which the sponsored links on that website point. The Respondent’s use of the words “art supply” clearly demonstrate awareness of the goods and services in respect of which the Complainant’s trade mark was registered and used, and there would be no point to the Respondent’s conduct if it did not result in commercial gain. The Respondent is plainly relying on the goodwill of the Complainant’s mark to lead Internet users to the site to which the Respondent’s parked domain name resolves. The consequence of a finding that paragraph 4(b)(iv) of the Policy is made out is that it is taken to be evidence of the registration and use of a domain name in bad faith. In other words, despite the Panel being of the view that the Respondent could not have had the Complainant in mind at the time the Disputed Domain Name was registered, the Policy operates as a deeming provision which on this occasion the Complainant is able to utilize.
Based on paragraph 4(b)(iv) the Panel finds that the Disputed Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) 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 Disputed Domain Name <blickartsupply.com> be transferred to the Complainant.
Philip N. Argy
Date: October 17, 2015