WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mills Brothers B.V. v. Private Proxy Registration
Case No. D2011-2140
1. The Parties
The Complainant is Mills Brothers B.V. of Tilburg, Netherlands, represented by AKD advocaten & notarissen, Netherlands.
The Respondent is Private Proxy Registration of Sarasota, Florida, United States of America, represented by Double Dutch Homes, LLC, United States of America.
2. The Domain Name and Registrar
The disputed domain name <thestingonlineshop.com> is registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2011. On December 7, 2011, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain name. On December 7, 2011, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on December 9, 2011.
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 December 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 3, 2012. The Response was filed with the Center on December 30, 2011.
The Center appointed William A. Van Caenegem as the sole panelist in this matter on January 9, 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 the owner of Benelux trademark registration No. 462718 for THE STING for goods and services in class 25 (clothing, footwear and headgear), registration date May 25, 1989; and Community trademark THE STING, No. 410339 for goods and services in class 25 (clothing, footwear and headgear), registration date November 26, 1999.
The disputed domain name was registered by the Respondent on October 28, 2011.
5. Parties’ Contentions
The Complainant asserts that Mills Brothers B.V. licenses The Sting B.V. to use the trademark THE STING in the course of trade for the goods and services for which the trade mark is registered, i.e. clothing. The Complainant asserts that the trademark is used in its department stores in the Netherlands, Belgium, Germany and the United Kingdom. The trademark is also used in the Complainant’s domain names for its websites “www.thesting.com” and “www.thesting.nl”.
The Complainant asserts that the disputed domain name contains the trademark THE STING in its entirety, the rest of the disputed domain name being descriptive. The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark, to the extent that consumers will assume there is a link between the Respondent’s website and the Complainant. This effect is further enhanced by the fact that the website to which the disputed domain name resolves links directly to the homepage of The Sting, also displaying vacancies at, and YouTube movies of The Sting. Since the disputed domain name also contains information about The Sting, its stores and several brands it sells, consumers will assume that this information originates with The Sting and the Complainant. The Complainant contends that by this practice the Respondent infringes its trademark rights.
The Complainant further asserts that the Respondent has no permission to register the disputed domain name or to use the trademark THE STING in a domain name in any way. The Respondent does not own trademark rights in “thestingonlineshop” and does not use the disputed domain name as its own trade name.
Further the Complainant asserts that the disputed domain name is not being used for a real online shop. No clothing is offered and the website only refers to the Complainant’s trademark, uses information, including about vacancies, from the websites of The Sting, advises about fashion, and also advertises other brands of clothing.
The Complainant contends that the Respondent has not acquired any legitimate interests in the disputed domain name, since it is not commonly known by that name. It did not use the disputed domain name in good faith as the trademark rights of the Complainant predate the registration of the disputed domain name by more than 5 years. The Complainant contends that the Respondent is only using the disputed domain name to commercially gain, mislead consumers and tarnish the Complainant’s trademark.
Nor is the disputed domain name being used in good faith, according to the Complainant, who contends that the Respondent was familiar with the Complainant’s trademark and trade name, as these are well known to the relevant public interested in trendy clothing in several European countries. The Complainant asserts it has used the relevant trademark for several years and in a number of countries, owns several department stores and also advertises online. Furthermore, the Respondent refers to The Sting stores on the website to which the disputed domain name resolves.
The Complainant contends that the Respondent is riding on the coat tails of the Complainant and taking unfair advantage of the Complainant. The website to which the disputed domain name resolves is misleading and confusing, according to the Complainant, and by its use the Respondent is generating traffic to its website.
Further the Complainant contends that it is unable to use a domain name incorporating its trademark, which restricts the management of its own trademark by the Complainant. Finally the Complainant contends that there are no indications that the Respondent has registered the disputed domain name for any reasons other than to sell it at a high price to the Complainant or to gain commercially from attracting advertisers such as McGregor and V&D (for clothing).
The Respondent asserts that the relevant part of the disputed domain name is “sting” since “sting” and “the sting” are identical in perception, and that the word “sting” is a common English word with various dictionary meanings. Further the Respondent contends that the disputed domain name and various similar ones could be mistaken for a website promoting the world famous singer Sting. Such domain names do not infringe the trademark THE STING of the Complainant.
The Respondent contends that the disputed domain name may also serve to promote “www.therealsting.com” who is a famous wrestler.
Further the Respondent contends that the disputed domain name can serve several interests concerning the word “sting” and therefore is not the sole interest of the Complainant.
Concerning registration and use in good faith, the Respondent asserts that the disputed domain name has been used to promote fashion online. Further, the Complainant does not have an online store and therefore has not lost sales or business. The Respondent also contends that the website to which the disputed domain name resolves has promoted fashion, The Sting brand and company and its stores only in a favorable manner. Hence the Respondent contends that the disputed domain name has not been used in bad faith.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is not identical to the Complainant’s trade mark THE STING. However, the disputed domain name incorporates the Complainant’s trademark in its entirety. The Complainant’s trademark constitutes the initial and most striking part of the disputed domain name. The additional words “onlineshop” are entirely descriptive in nature and suggest that the disputed domain name serves to enable the online provision of goods by the Complainant. The disputed domain contains the words “thestingonline” and not “stingonline”, and contrary to what the Respondent suggests, the two are not in fact identical in perception. Where a dictionary word is used in a trademark, the precise representation or additional elements will often be of considerable significance in terms of distinctiveness. For an Internet user who is aware of and interested in the clothing supplied by the Complainant under its trademark THE STING, the disputed domain name clearly suggests some connection with the Complainant, which does not in fact exist. The other connections which the disputed domain name may suggest, some of which the Respondent refers to in his Response, are not so strong as to rule out that the average consumer interested in the goods the Complainant supplies would infer some connection between the disputed domain name and the Complainant.
Therefore the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark THE STING.
B. Rights or Legitimate Interests
The Complainant asserts that it has not licensed or authorized the Respondent to use its trademark THE STING or register a domain name containing or reflecting its trademark. The Respondent is not known by the name “The Sting”, or “thestingonlineshop” or anything similar, nor does it own any registered trademarks that contain any relevant word or words.
The website to which the disputed domain name resolves does contain references to the Complainant’s shops and business. However, this does not mean it operates as a legitimate reseller within the principles of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, since it also offers rival branded products, as well containing general fashion information and advising Internet users of job openings with the Complainant. Nowhere is the true relationship with the Complainant made clear. In these circumstances the Respondent has not acquired the rights or legitimate interests that may result from honestly retailing branded goods on the Internet.
Rather the website to which the disputed domain name resolves constitutes but a thinly veiled attempt to derive some commercial or financial advantage from the incorporation of the Complainant’s trademark THE STING in the disputed domain name. That the relevant website is concerned with fashion in a number of ways further reinforces this conclusion. Neither the disputed domain name itself nor the contents of the relevant website suggest a legitimate comment site.
Nor is it apt to say that the disputed domain name may suggest something, like a connection with the artist Sting or the wrestler The Real Sting, where the content of the website is not at all concerned with either. Likewise, that the Complainant is not the only person who may have interests in the word “sting”, as the Respondent suggests, does not establish that the Respondent ipso facto acquires rights or legitimate interests in a domain name containing that word.
Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant’s trademark THE STING is quite distinctive considering the goods (clothing) in relation to which it is registered and used. The Complainant uses it in connection with clothing stores in more than one European country. The trademark was first registered in 1989, whereas the disputed domain name was registered in 2011.
Furthermore, the disputed domain name resolves to a website which concerns fashion in general, vacancies with the Complainant, and other fashion brands. It is thus apparent to the Panel that the Respondent registered the disputed domain name with full knowledge of the Complainant’s trademark THE STING and the goodwill in relation to clothing that attaches to it.
In terms of the use to which the disputed domain name has been put, the website to which it resolves concerns fashion in general, providing fashion tips and seasonal information, contains information about job vacancies with the Complainant, and provides links and panels which allow shopping online for other fashion brands such as V&D and McGregor. Thus the contents suggest some sort of affiliation with the Complainant, in particular by referring to job openings, and by retailing clothing brands, while no such affiliation exists. At the same time it offers online access to rival products. The website is not primarily concerned with comment on fashion in general or on the Complainant’s goods more particular. The website is rather of a trading nature, and it is apparent from all the circumstances that the Respondent intentionally attempts to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademark.
Therefore the Panel finds that the disputed domain name was registered and is being used in bad faith.
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 <thestingonlineshop.com> be transferred to the Complainant.
William A. Van Caenegem
Dated: January 23, 2012