WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Standard Innovation Corporation v Shopintimates USA

Case No. D2011-0049

1. The Parties

The Complainant is Standard Innovation Corporation of Ottawa, Ontario, Canada, represented by Piasetzki & Nenniger LLP, Canada.

The Respondent is Shopintimates USA of Humble, Texas, United States of America.

2. The Domain Names and Registrar

The Disputed Domain Names <wevibesalsa.com> and <wevibetouch.com> are registered with Name.com LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (“the Center”) on January 10, 2011. On January 11, 2011 the Center transmitted by email to Name.com LLC a request for registrar verification in connection with the Disputed Domain Names. On the same day, Name.com LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 14, 2011. In accordance with paragraph 5(a) of the Rules, the due date for response was February 3, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 4, 2011.

The Center appointed Archibald Findlay SC as the sole panelist in this matter on February 14, 2011. 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 paragraph 7 of the Rules.

4. Factual Background

The Complainant asserts that it has trademark registrations for the trademark WE-VIBE and Design in the following jurisdictions:

- the United States of America; Canada; Japan; Australia; Norway; Mexico; Korea; New Zealand and the European Community (which covers the following countries): Austria, Belgium, Bulgaria, Cypress, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, United Kingdom, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Romania, Sweden, Spain, Poland, Portugal, Slovakia and Slovenia.

The Complainant has also put up a United States trademark registration for the wordmark “WE-VIBE”. The registrations are in respect of Class 10 and relate to the use of the trademark in question in association with adult, marital and sexual aids, namely massagers, vibrators and stimulators, as well as accessories therefore. These trademarks will be referred to collectively as “the Complainant’s trademarks” or “WE-VIBE trademarks”.

The Complainant also asserts that it has unregistered trademark rights in the trademarks WE-VIBE TOUCH and WE-VIBE SALSA.

The Complainant has also registered a series of domain names incorporating its trademark, including:

<we-vibe.com>

<we-vibe.ca>

<we-vibe.cn>

<we-vibe.net>

<we-vibe.us>

<wevibe.ca>

<wevibe.cn>

<wevibe.com>

<wevibe.net>

All these domain names were registered, at the latest, since May 6, 2008. According to a WhoIs search the Disputed Domain Names <wevibesalsa.com> and <wevibetouch.com> were registered on October 21, 2010.

5. Parties’ Contentions

A. Complainant

The Complainant’s complaint may be summarised as follows:

The Complainant contends that the Disputed Domain Names incorporate the Complainant’s registered

WE-VIBE trademark, and consist entirely of the Complainant’s unregistered WE-VIBE TOUCH and WE-VIBE SALSA trademarks.

The Complainant’s WE-VIBE trademark has been used in the United States since as early April 1, 2007 and in Canada since as early as April 2008, even though the use of the mark in the remaining countries referred to earlier is subsequent to those dates.

The Complainant’s trademark is prominently displayed on its website accessible around the world through any of its listed Domain Names and, since its launch in March 2008 up to May 20, 2010, the Complainant’s website had received a significant amount of web traffic, namely 3 409 906 hits or page views.

In addition, the Complainant’s WE-VIBE TOUCH and WE-VIBE SALSA trademarks have been used in the United States and Canada since October 19, 2010.

The Complainant’s trademarks are not legitimately used by any other individual or entity (save for entities properly licensed by or affiliated with it), nor in relation to products or services other than those offered by the Complainant, and accordingly its trademarks have become uniquely associated with the Complainant’s wares, particularly since the dates of first use in the United States and Canada.

The Complainant further contends that the Respondent has no rights in any of its WE-VIBE trademarks, nor has any licence or permission been given to it by the Complainant. This notwithstanding, the Complainant further complains that the Disputed Domain Names are used in association with a website which purports to sell the Complainant’s wares, and include text and images copied from the Complainant’s website without its permission.

The Complainant therefore asserts that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names and that its registration and any use following thereon accordingly have been in bad faith.

B. Respondent

By its failure to respond at all, the Respondent is in default pursuant to paragraphs 5(e) and 14 of the Rules and paragraph 7(c) of the Supplemental Rules, with the result that the Panel must now deal with the matter on the Complaint.

6. Discussion & Findings

According to paragraph 15(a) of the Rules:

“A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:

(i) That the domain name registered by the respondent is identical or confusingly similar to a trademark or a service mark in which the complainant has rights.

(ii) That the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) That the domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances or acts which would, for the purposes of paragraph 4(a)(iii) above, be evidence of the registration and use of a domain name in bad faith. These are non-exclusive. Similarly, paragraph 4(c) of the Policy sets out three illustrative circumstances which would demonstrate the respondent’s rights or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii).

A. Effect of Default

Notwithstanding default on the part of the Respondent, the Complainant bears the burden of proof in respect of each of the three main elements in terms of paragraph 4(a) of the Policy referred to above. Such default does not entitle the Complainant to a finding in its favour by reason thereof, nor does it constitute an acceptance or admission of any of the averments and contentions put forward, or the supporting evidence put up. The Panel is nevertheless not bound to accept all that has been put up by the Complainant but must evaluate it as it stands. (Brooke Bollela a.k.a. Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383; San Lameer (Pty) Ltd & Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd, WIPO Case No. D2010-0551).

However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inference as it considers appropriate from the failure of a party to comply with a provision or requirement of the Rules. (Allianz Compañía de Seguros y Reaseguros S A v. John Michael, WIPO Case No. D2009-0942).

The Respondent having failed to offer any affirmative facts and circumstances by way of challenge to what is pleaded by the Complainant may entitle the Panel to conclude, where appropriate, that such failure by the Respondent may weigh against it in circumstances where the Panel is satisfied by the Complainant that sufficient evidence is before it to warrant the drawing of a conclusion adverse to the Respondent. This can arise where there is an absence of any explanation which might have had a bearing upon any claim to rights or legitimate interests in the Disputed Domain Names, such as the use of, or preparation to use, the Disputed Domain Names prior to notice of the dispute, being commonly known by the Disputed Domain Names, or making legitimate non-commercial or fair use of the Disputed Domain Names. (Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465; San Lameer case supra).

In the present instance, the Panel finds that there are no exceptional circumstances for the failure of the Respondent to submit a response. Thus the Panel infers that the Respondent does not deny the facts asserted and contentions made by the Complainant from these facts. (Reuters Limited v. Global Net 2000 Inc, WIPO Case No. D200-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc v. Domain Contact, WIPO Case No. D2003-0994).

Accordingly the Panel considers that it may accept asserted facts that are not unreasonable, with the consequence that the Respondent will be subjected to the inferences that flow naturally from the information provided by the Complainant (Reuters case supra; RX America LLC v. Matthew Smith, WIPO Case No. D2005-0540; and Allianz case supra).

B. Identical or Confusingly Similar

The assertions put forward by the Complainant and supported by the registration documentation listing the trademarks registered establishes, in the view of the Panel, that the WE-VIBE trademarks were registered, certainly in the United States of America and Canada, prior to the registration of the Disputed Domain Names. Similarly, the domain names registered by the Complainant were likewise registered prior; on the facts presently before it the Panel accepts also that the unregistered trademarks were published and used commercially by the Complainant prior to the registration of the Disputed Domain Names, albeit that the publication took place some two days prior to the latter and was through the medium of the Complainant’s website.

The fact that the word mark portion of the registered trademarks and design has been incorporated entirely into the Disputed Domain Name by the Respondent is, in the view of the Panel, sufficient to establish that the Disputed Domain Names are identical or confusingly similar to the Complainant’s registered marks. (Quixar Investments Inc v. Dennis Hoffman, WIPO Case No. D2000-0253; Universal City Studios Inc v. David Burns & Adam – 12Dot.Com, WIPO Case No. D2001-0784; Experion Information Solutions Inc v. BPB Prumerica Travel a/k/a H.Bousquet a/k/a Brian Evans, WIPO Case No. D2002-0367; Société des Produits Nestlé Sa v. Mustafa Yakin – Moniker Privacy Services, WIPO Case No. D2008-0016; Media24 Limited v. Llewellyn Du Randt, WIPO Case No. D2009-0699).

The view of the Panel in this regard is further strengthened by the fact that the Domain Names registered by the Complainant would support the inference. Furthermore, even though the two unregistered trademarks which are identical to the Disputed Domain Names (save for the addition of a specific top-level domain), notwithstanding non-registration, can still give rise to protectable common law trademark rights for purposes of the Policy (Imperial College v. Christopher Dessimroz, WIPO Case No. D2004-0322; The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; Media 24 Ltd case supra).

The Panel is aware of the principle that unregistered trademarks do not necessarily give rise to rights equivalent to those enjoyed by the holders of registered trademarks in that a complainant would normally be required to show that the name had become a distinctive identifier associated with the complainant or its goods and services (Universal City Studios Inc case supra; Imperial College case supra). The Panel, however, takes the view that in the present matter the unregistered marks are not stand-alone or the sole basis upon which the Complainant seeks to assert its rights but form part of the body of overall intellectual property rights which it has acquired and holds by way of its registered trademarks, its use as a form of mark of its registered domain names, as well as its unregistered trademarks.

In other words, the Panel is of the view that it is permissible in this case to regard the unregistered trademarks as a mere extension of the existing rights already established by the Complainant’s other intellectual property (being its registered trademarks and its use as a form of mark of its domain names) and that this would entitle the Panel, in the circumstances, to accord sufficient weight to the unregistered trademarks, particularly when comparing them with the Disputed Domain Names which are identical.

In the circumstances, the Panel is satisfied that the Complainant has established that the Disputed Domain Names are confusingly similar to the Complainant’s trademarks.

It follows that the Panel concludes that the Complainant has established the first element in terms of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the Respondent, shall demonstrate its rights to or legitimate interests in the Disputed Domain Names for the purposes of paragraph 4(a)(ii) of the Policy, namely:

(i) before any notice to the Respondent of the dispute, the use by the Respondent of, or demonstrable preparations to use, the Disputed Domain Names or a name corresponding to the Domain Name in connection with the bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business or other organisation) has been commonly known by the Disputed Domain Names, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate non-commercial or fair use of the Disputed Domain Names, without intent for commercial gain to misleadingly divert customers or to target the trademark or service mark at issue.

Although paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the Disputed Domain Names, once the Complainant establishes a prima facie case that none of the three circumstances establishing rights or legitimate interests applies, the burden of production of evidence on this factor shifts to the Respondent to rebut the showing, despite the overall burden of proof remaining upon the Complainant to prove each of the three elements of paragraph 4(a) of the Policy. (Document Technologies Inc v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Universal City Studios Inc case supra).

Having defaulted, the Respondent has placed itself in a position that it has not produced any evidence to rebut such prima facie case as may have been established by the Complainant, and the enquiry must therefore focus upon what is said by the Complainant in order to determine whether or not it has been so established.

The Complainant contends that it is the sole proprietor of the mark in question and that the Respondent is neither an agent nor a licensee. It follows, therefore, that the Respondent has no right to the use of that mark in the Disputed Domain Names and that any unauthorised use for commercial purposes would violate the exclusive trademark rights enjoyed by the Complainant. (Caesar’s World, Inc. & Park Place Entertainment Corporation v. Japan Nippon, WIPO Case No. D2003-0615; AT&T Corp. v. Roman Abreu d/b/a Smarttalk Wireless, WIPO Case No. D2002-0605; America Online, Inc v. Xianfeng Fu, WIPO Case No. D2000-1374; Sybase, Inc v. Analytical Systems WIPO Case No. D2004-0360; San Lameer case supra).

Apart from there being no authorisation on the part of the Complainant, there is no relationship or association between the Complainant and the Respondent, whether by licence or otherwise, which also militates against the Respondent having rights or legitimate interests in or other entitlement which might fall within that purview (Sybase Inc case supra). Moreover, the Respondent, by adopting materials from the Complainant’s website and incorporating them into its own, is thereby seeking to suggest that there is a connection or association between the Respondent and the Complainant where there is not. (Forte (UK) Limited v. Eugenio Ceschel, WIPO Case No. D2000-0283).

In view of the facts and circumstances put up on this ground and which are unchallenged, the Panel is of the view that the Complainant should therefore succeed on this ground as well.

The Panel is therefore satisfied that, in the circumstances, the Complainant has established the second element in terms of paragraph 4(a)(ii) of the Policy.

D. Registration and Use in Bad Faith

Paragraph 4(b) of the Policy provides some guidance on this question. It provides:

“For the purposes of paragraph 4(a), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(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 website 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 website or location or of a product or service on your website or location.”

Whilst bad faith can exist where a domain name contains in its entirety a complainant’s trademark, the Panel does not see that this principle cannot also apply where the dominant feature of the trademark of the complainant and where the whole trademark, albeit unregistered, has been so incorporated.

Moreover, with particular regard to paragraph (iv) of the Policy quoted above, the Respondent has made the misleading statement in its website by incorporating text and images from the Complainant’s website, thereby suggesting that it either has a relationship with the Complainant or does so with the approval or endorsement of it. In those circumstances, such copying may well amount to a separately actionable copyright infringement.

The implication arising from the website, in the mind of a would-be customer, is therefore clearly that the website is either of or in some way associated with the Complainant, which in turn, in the view of the Panel, leads to the inescapable conclusion that such potential customer is invited to do business with either the Complainant itself or someone authorised on its behalf in relation to its goods. That would, by application of paragraph 4(b)(iv) of the Policy, constitute bad faith. (Media 24 Ltd case supra; San Lameer case supra).

Moreover, by use of the Complainant’s trademark in the Disputed Domain Names, the Respondent is trading on the value established by the Complainant in its marks, to attract users and thereby deriving economic benefit from either those users attracted to the Respondent’s website or by receiving compensation from others, if these would-be customers are rooted elsewhere. Such a practice would also constitute bad faith. (Yahoo! Inc and GeoCities v. DataArt Corp., Data Art Enterprises, Inc., Stonybrook Investments, Global Net 2000 Inc., Powerclick, Inc., and Yahoo Search Inc, WIPO Case No. D2000-5087).

The selection of domain names identical or confusingly similar to the Complainant’s and the Complainant’s domain names, particularly in the absence of any explanation, leads to the conclusion, in the view of the Panel, that the Respondent must have known of the reputation of the Complainant in the market and therefore it selected the Disputed Domain Names in circumstances where it was very well aware of the Complainant’s reputation and intended to benefit therefrom. (Deutsche Post AG v. MailMiJ LLC, WIPO Case No. D2003-0128).

The Panel is therefore satisfied that the Complainant has established the third element under paragraph 4(a)(iii) of the Policy.

7. Decision

For all the aforegoing reasons, in accordance with paragraph 4(a) of the Policy and paragraph 15 of the Rules, the Panel orders that the Disputed Domain Names <wevibesalsa.com> and <wevibetouch.com> be transferred to the Complainant.

Archibald Findlay SC
Sole Panelist
Dated: February 28, 2011