WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Shear Enterprises, LLC v. WhoisGuard / Triple B Holdings Ltd

Case No. D2012-0068

1. The Parties

The Complainant is Shear Enterprises, LLC of St. Petersburg, Florida, United States of America, represented by Mosaic Legal Group, PLLC, United States of America.

The Respondent is WhoisGuard of Los Angeles, California, United States of America and Triple B Holdings Ltd of Cyprus.

2. The Domain Name and Registrar

The disputed domain name <ahhbrasite.com> is registered with eNom, Inc..

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2012. On January 17, 2012, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the disputed domain name. On January 18, 2012, eNom, Inc. 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 January 19, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. In response to this notice and to a notification of January 19, 2012 that the Complaint was formally deficient, the Complainant filed an amended Complaint on January 19, 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 the Respondent of the Complaint, and the proceedings commenced on January 20, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 9, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 10, 2012.

The Center appointed Debrett G. Lyons as the sole panelist in this matter on February 16, 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. Preliminary procedural issues

A. Additional respondents

The registrant of record for the disputed domain name is a proxy service provider. During these Administrative Proceedings it revealed the underlying registrant to be Triple B Holdings Ltd. The Complainant sought to include a third respondent (CPI World Herbal) which it argued had a commercial relationship with Triple B Holdings Ltd. Whether that relationship exists or not is immaterial to these proceedings since any decision in favour of the Complainant is limited to orders affecting the holder and not third parties. Accordingly, the third respondent which was nominated in the Complaint has been removed from this decision.

B. Additional domain name

After commencement of these Administrative Proceedings it came to the Complainant’s notice that the domain name <getyourahhbra.com> had also been registered and the Complainant sought to have that domain name brought within these proceedings. The Center advised the Complainant that the Panel would decide that question.

Paragraph 3(c) of the Rules states that “the complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.”

The domain name <getyourahhbra.com> was registered on December 8, 2011. The registrant is WhoisGuard. Whilst that is the same domain-name holder as the Respondent with the same address, it is also a proxy service provider acting for hundreds of actual registrants whose identities are shielded. From this alone it can not be reasoned that there is a single owner of the two domain names in question. The Panel makes its own observation that this name resolves to a website nearly identical to the website at “www.ahhbrasite.com” but that is the only evidence of any weight of a possible link between the domain names. The Panel is not inclined to order further procedural steps including registrar verification and potential additional amendments and notifications. In the absence of additional evidence of common ownership of the domain names the Panel declines to add the domain name <getyourahhbra.com> to these Administrative Proceedings. Naturally this in no way precludes the Complainant from commencing a separate Complaint under the Policy in relation to this latter domain name.

5. Factual Background

The facts relevant to the findings and decision in this case are that:

the Complainant sells brassieres by reference to the registered trade mark, AHH BRA, and by way of its website at “www.ahhbra.com”;

the disputed domain name was registered on November 2, 2011;

at the time the Complaint was filed, a website to which the disputed domain name resolves promoted the sale of AHH BRA branded brassieres, allegedly using text and graphics lifted directly from the Complainant’s website;

there has been no commercial or other relationship between the parties and the Complainant has not authorized the Respondent to use the trade mark AHH BRA.

6. Parties’ Contentions

A. Complainant

The Complainant asserts trade mark rights in AHH BRA and alleges that the disputed domain name is identical to the trade mark.

The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant alleges that the Respondent registered and used the disputed domain name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

7. Discussion and Findings

It is the responsibility of the Panel to consider whether the requirements of the Policy have been met, regardless of the fact Respondent failed to submit a reply. According to paragraph 4(a) of the Policy, the Complainant must prove that:

(i) the disputed domain name is identical or confusingly similar to a trade mark 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 has been registered and is being used in bad faith.

Having considered the Complaint and the available evidence, the Panel finds the following:

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to the trade mark.

Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trade mark rights. It is accepted that a trade mark registered with a national authority is evidence of trade mark rights for the purposes of the Policy¹. The Panel finds that the Complainant has trade mark rights in AHH BRA acquired through registration².

The remaining question is whether the disputed domain name <ahhbrasite.com> is confusingly similar to the Complainant’s trade mark (since it is clearly not, as the Complainant asserts, identical to the trade mark). For the purposes of testing confusing similarity, the generic top-level domain “.com” can be ignored.³ In addition, within the context of ecommerce, the term “site” is wholly descriptive.

Subtraction of these non-distinctive integers leaves only the Complainant’s trade mark which has been entirely assumed, save for the fact that the elements AHH and BRA have been coalesced, as indeed they must be in a domain name. The Panel finds the disputed domain name to be confusingly similar to the Complainant’s trade mark.

Accordingly, the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Nevertheless, it is well-settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to rebut such prima facie case by demonstrating rights or legitimate interests⁴.

Notwithstanding the lack of a Response to the Complaint, paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:

“(i) before any notice to you 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 (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 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.”

The public WhoIs data does not support any conclusion that the Respondent might be commonly known by the disputed domain name. There is no evidence that the Respondent has trademark rights in the disputed domain name, registered or not.

The Respondent has not provided any evidence that it used the disputed domain name in connection with a bona fide offering of goods or services prior to notice of the dispute. Counter indications arise from the evidence provided by the Complainant of a website corresponding with the disputed domain name which slavishly copies material from the Complainant’s website at “www.ahhbra.com”.

The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent in failing to reply has not rebutted such prima facie case.

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and so the Complainant has satisfied the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:

“i. circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

ii. you have 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 you have engaged in a pattern of such conduct; or

iii. you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

iv. by using the domain name, you 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 Complainant does not address paragraph 4(b) of the Policy in a direct manner but makes broad allegations of bad faith behaviour. Nonetheless, even in the absence of focused submissions, it is plain to the Panel that the Respondent’s conduct falls squarely under paragraph 4(b)(iv). The Panel has already found the disputed domain name to be confusingly similar to the Complainant’s trade mark. The Panel finds that the likelihood of confusion as to source is therefore highly likely. Paragraph 4(b)(iv) also requires an intention for commercial gain on the part of the Respondent. It is clear that the Respondent is offering goods for sale from a website to which the disputed domain name resolves and so this aspect is also satisfied.

The Panel finds that the Respondent registered and used the disputed domain name in bad faith and, accordingly, the Complainant has satisfied the third and final limb of the Policy.

8. Decision

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 <ahhbrasite.com> be transferred to the Complainant.

Debrett G. Lyons
Sole Panelist
Dated: February 23, 2012

¹ See State Farm Mutual Automobile Insurance Company v. Periasami Malain, NAF Claim No. 705262 (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, NAF Claim No. 174052 (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).

² The Complainant has several registrations for the trade mark, AHH BRA including, by way of one example, European Community Trademark registration no. 9677501.

³ See Gardline Surveys Ltd v. Domain Finance Ltd., NAF Claim No. 153545 (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).

⁴ See, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. 741828; AOL LLC v. Jordan Gerberg, NAF Claim No. 780200.