WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Frontline GmbH v. Omar Virjee
Case No. D2012-1981
1. The Parties
The Complainant is Frontline GmbH of Hamburg, Germany, represented by Siebeke Lange Wilbert, Germany.
The Respondent is Omar Virjee of Richmond, Texas, United States of America.
2. The Domain Name and Registrar
The disputed domain name <frontlinefashions.com> is registered with GoDaddy.com, LLC (“the Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2012. On October 8, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 10, 2012, the Registrar 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 12, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 1, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 2, 2012.
The Center appointed Reynaldo Urtiaga Escobar as the sole panelist in this matter on November 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 an apparel and footwear retailer doing business exclusively online in Germany since 1995. The Complainant is incorporated and registered in Hamburg under the “frontline” company name, and also carries the “frontlineshop” trade name on the Internet.
The Complainant operates online stores at “www.frontline.eu”, “www.frontlinefashion.com”, “www.frontlineshop.com”, and “www.frontline-shop.com”, among twenty other gTLDS or ccTLDS including the term “frontlineshop”.
The Complainant holds registered marks for FRONTLINE and FRONTLINESHOP in Germany and in the European Union, since as early as August 8, 1995 in international classes 9, 14, 18, 25, 28 and 35.
The Respondent registered the disputed domain name on July 12, 2012. As of the date of this decision, the disputed domain name is parked with GoDaddy and the associated website shows nothing but sponsored links to apparel and fashion-related third party sites.
5. Parties’ Contentions
The Complainant’s submissions can be summarized as follows:
i. The only difference between the disputed domain name and the Complainant’s FRONTLINE trademark is the word “fashions” which is both generic and negligible;
ii. In accordance with previous UDRP decisions, the disputed domain name is confusingly similar to the Complainant’s mark as the former incorporates the latter in its entirety, and despite the addition of a generic and negligible term like “fashions” which merely describes the nature of Complainant’s goods;
iii. The Respondent is not affiliated with the Complainant, nor does it have its permission to register the disputed domain name;
iv. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, nor has it been commonly known by the latter. Neither has the Respondent used or made demonstrable preparations to use the disputed domain name;
v. In accordance with relevant precedents, the registration and use of a domain name that is confusingly similar to a registered mark does not afford rights or legitimate interests in such domain name;
vi. The fact that the disputed domain name is parked in a website showing paid links to the Complainant’s competitors eliminates the possibility of legitimate noncommercial or fair use under the Policy as it is very likely that the Respondent has been taking unfair advantage of Internet users looking for the Complainant’s online retail shop;
vii. The lack of a reasonable explanation for the choice of the disputed domain name is itself indicative of its bad faith registration in the absence of whatever the Respondent’s rights or legitimate interests in the disputed domain name;
viii. By generating click-through revenue from sponsored links, the disputed domain name has been used to attract Internet users for commercial gain to the Respondent’s website while creating a likelihood of confusion with the Complainant’s FRONTLINE trademark;
ix. The European focus of the Respondent’s website, which includes text in German, provides strong evidence that the Respondent was aware of the Complainant,-itself a German corporation-, when it registered the disputed domain name;
x. As held by prior panels, the Respondent is ultimately accountable for the advertisements displayed on the website at the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
i. the disputed domain name is identical or confusingly similar to a trademark 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 was registered and is being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
A. Identical or Confusingly Similar
The question under paragraph 4(a)(i) of the Policy is whether the disputed domain name is identical or confusingly similar to the Complainant’s trademark, not whether the website to which the disputed domain name resolves will confuse Internet users. See The Vanguard Group, Inc. v. John Zuccarini, WIPO Case No. D2002-0834 (a complainant need not to establish actual confusion because the test is objective, not subjective).
The Complainant proves to hold registered trademark rights in the term FRONTLINE. The Complainant goes on to allege that the disputed domain name is confusingly similar to its registered trademark because the Respondent’s domain name incorporates the Complainant’s mark in its entirety. The Complainant contends that the addition of a generic word like ”fashions” does not detract from the visual, aural, and conceptual confusion between the disputed domain name and its FRONTLINE trademark.
Paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) makes clear that the test for confusing similarity under the UDRP involves a straightforward visual or aural comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion and that, in order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent Internet user confusion.
In taking this approach, the Panel finds that the Complainant’s FRONTLINE trademark is sufficiently distinctive to be recognized as such within the disputed domain name. By contrast, “fashions” is a broadly general term that is regarded by the Panel as non-distinguishing subject-matter. It follows that its annexation to the disputed domain name does nothing to prevent the Internet user from being confused. See Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413 (the addition of the generic term "fashion" is not sufficient to avoid confusion); also Karen Millen Fashions Limited v. DFS Xcxc, WIPO Case No. D2011-2114 (the term “fashion” is generic, the addition of which is held insufficient to dispel confusing similarity).
This Panel therefore concludes that the domain name <frontlinefashions.com> is confusingly similar to the trademark FRONTLINE from a visual and literal standpoint.
The Complainant has thus met the first threshold of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the Respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). Paragraph 4(c) of the Policy provides 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 the Respondent’s rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
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.”
As noted in paragraph 2.1 of the WIPO Overview 2.0, the burden is on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the disputed domain name. However, because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see also, e.g. World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306.)
The Complainant warrants to have never licensed or authorized the Respondent to use its FRONTLINE trademark as a domain name. The Complainant also claims that the Respondent is not known by the disputed domain name. On these credible assertions and the evidence put forward regarding the use to which the disputed domain name has been subjected, the Panel finds that the Complainant has established a prima facie case against the Respondent.
In the absence of a Response, this Panel may draw appropriate inferences from the Respondent’s default. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse, WIPO Case No. D2000-1221 (finding that Respondent's failure to respond can be construed as an admission that it has no rights or legitimate interests in the disputed domain name); Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., eResolution Case No. AF-0336 (finding no rights or legitimate interests where no such rights or interests were immediately apparent to the panel and respondent did not come forward to suggest any right or interest it may have possessed).
Further, the printouts of the website to which the disputed domain name resolves show that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain, nor is it using the disputed domain name in connection with a bona fide offering of goods or services as the website posts parking pages and sponsored hyperlinks to apparel and fashion-related websites resulting in misleading of Internet users. See United Parcel Service of America, Inc. v. Michael Robert, WIPO Case No. D2008-0339 (the respondent presumably earns revenues from the website at the domain name when Internet users click on sponsored advertising links. This constitutes neither a bona fide offering of goods and services under the domain name, nor a noncommercial or fair use thereof).
As a result, the Complainant has demonstrated the second limb of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires a complainant to prove that the disputed domain name has been registered and is being used in bad faith in order to be successful in its complaint. Paragraph 4(b) of the Policy sets forth a number of non-exclusive grounds of bad faith registration and use:
“(i) circumstances indicating that you [the respondent] have registered or 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 [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) you [the respondent] 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 [the respondent] have engaged in a pattern of such conduct; or
(iii) you [the respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [the respondent] have intentionally attempted to attract, for commercial gain, Internet users to your [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your [the respondent’s] website or location or of a product or service on your [the respondent’s] website or location.”
On the facts, the disputed domain name has been parked with the Registrar since its registration on July 12, 2012. It is further demonstrated that the web portal to which the disputed domain name resolves includes links to websites of third parties who are in the same business of the Complainant.
This constitutes direct evidence that the disputed domain name has been registered and is being used in bad faith for a profit, which is derived from click-through advertising revenue. See Iteso, A.C. v. Jose Colin, WIPO Case No. D2011-1686 ( the Panel notes that the website at the disputed domain name was a parking page with pay-per-click links to third parties’ portals, thus triggering the ground of bad faith laid down by paragraph 4(b)(iv) of the Policy).
Moreover, the fact that the website at the disputed domain name provides access to fashion and apparel online retailers in Europe like the Complainant is a strong indication that the Respondent sought to take unfair advantage of the Complainant’s FRONTLINE trademark and business when registering the disputed domain name.
In the premises, the Panel finds that the Respondent registered and is using the disputed domain name 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 <frontlinefashions.com> be transferred to the Complainant.
Reynaldo Urtiaga Escobar
Dated: November 26, 2012