WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Smarty Had A Party, LLC. v. Private Whois / Sergei Sergeiev
Case No. D2012-2215
1. The Parties
The Complainant is Smarty Had A Party, LLC. of Missouri, United States of America (“US”) represented by Jason Schmidt, US.
The Respondent is Private Whois of Pardubice, Czech Republic / Sergei Sergeiev of Minsk Owner, Belarus.
2. The Domain Name and Registrar
The disputed domain name <smartyhasaparty.com> is registered with Gransy, s.r.o. d/b/a subreg.cz (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2012. On November 12, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 14, 2012, 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 November 15, 2012 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 November 20, 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 November 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 13, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 14, 2012.
The Center appointed Fleur Hinton as the sole panelist in this matter on December 27, 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 commenced use of its SMARTY HAD A PARTY trade mark (the “trade mark”) in October, 2007 in the US and registered and commenced using the domain name <smartyhadaparty.com> at the same time. The Complainant is the owner of record for US Trademark Registration No. 3777476 for SMARTY HAD A PARTY for use on “On-line retail store services featuring catering and entertainment supplies” in International Class 35. Since that time, the trade mark appears to have become well-known as an upmarket provider of disposable party supplies for weddings, parties and other social occasions. The trade mark is registered in both the US and as a Community Trade Mark (“ctm”) with the Office for Harmonization of the Internal Market (“OHIM”) in the name of the Complainant. The US trade mark registration was lodged on September 1, 2009 and shows a first use in trade and commerce in the US of October, 2007. The ctm was lodged on May 20, 2010.
It appears that the Respondent had no use of the trade mark SMARTY HAS A PARTY prior to its domain name registration date of October 24, 2009.
5. Parties’ Contentions
The Complainant claims that the disputed domain name is identical or confusingly similar to the Complainant’s domain name <smartyhadaparty.com> and the Complainant’s registered trade mark SMARTY HAD A PARTY. There is only one letter’s difference between them.
It claims also that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant commenced use of the trade mark in October, 2007 and has used the domain name <smartyhadaparty.com> and trade mark SMARTY HAD A PARTY “exclusively” since January 6, 2012. This is a reference to the fact that the domain name <smartyhadaparty.co.uk> was used from sometime after December 21, 2008 by a United Kingdom (“UK”) registered company called T AS (presumably an abbreviation of “trading as”) Akinropo Limited until January 6, 2012 when the Nominet dispute resolution service, which offers administrative dispute resolution in respect of “.co.uk” domain names, ordered that it be transferred to the Complainant.
The Complainant says that it cannot find any use of the disputed domain name prior to its registration by the Respondent as a domain name on October 24, 2009. Therefore, it says, the Respondent’s domain name was not used until over 2 years after the Complainant had commenced its own use in the US. Further the Complainant contends that all use being made by the Respondent of the disputed domain name is either cybersquatting or “domain parking”. The website at the disputed domain name merely provides the web browser with the opportunity to click on one of the links, such as “kids (sic )party coming up?”, and be taken to another website which promotes products suitable for children’s parties.
The Complainant also claims that the disputed domain name is one which was registered in bad faith and is being used in bad faith: it was registered in bad faith with the aim of attracting people familiar with the Complainant’s website to the website at the disputed domain name with a view to achieving commercial gain; and the Respondent continues to use it in bad faith by profiting from the revenue generated by the visits of customers who visit the website only because they are confused and believe that they are visiting the website of the Complainant. Further, the Complainant argues that the fact that the Respondent has gone to such lengths to conceal its identity is additional evidence of its bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed under this administrative proceeding, the Complainant has to show that:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(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.
A. Identical or Confusingly Similar
It is clear that there is very little difference between the disputed domain name and the Complainant’s trade mark SMARTY HAD A PARTY. The Panel notes that in many cases where it is necessary to compare a trade mark with a disputed domain name, there is typically a typographical error. This error may be an incorrect letter, or, for example, a transposition of letters, which is apparent when the two are compared and which makes it relatively easy to see the difference and to pick the mistake. That is not the case here. For the average person who has perhaps heard of the Complainant’s trade mark SMARTY HAD A PARTY, the use of “smartyhasaparty” would not necessarily register as being a typographical error. Such a person may simply not realize that there is any difference because the variation in meaning is so slight. As the Complainant has said, the difference of one letter in this case merely changes the tense from the Complainant’s use of the expression in the past tense to the Respondent’s use of the present tense.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant’s trade mark SMARTY HAD A PARTY is a very distinctive trade mark and not one which would occur to other traders to use in relation to an offering of similar goods or services.
The Complainant has apparently made extensive use of its trade mark in relation to its offering of goods and services for people who are in the entertaining industry. It has not provided any information as to the amount of revenue which it has generated by reference to its trade mark and website for which the domain name <smartyhadaparty.com> is the address. It has indicated also that, apart from the present Respondent, it has used the dispute resolution service of another organization, Nominet of the UK in the past in order to have a domain name transferred to it. The respondent in the Nominet proceeding apparently used the disputed domain name <smartyhadaparty.co.uk> for about 2 years before action was taken by the Complainant to have that domain name transferred to it and the Panel does not know why it took so long for the Complainant to commence those proceedings. Nevertheless, the Panel finds that there is nothing in that situation which would prevent this Panel from finding for the Complainant in this situation.
Further, the Complainant in this case has not said specifically that it has not authorized the use of SMARTY HAS A PARTY to third parties.
Nevertheless, the Panel concedes that the Complainant’s case does show that in October, 2007 it commenced use of a very distinctive trade mark SMARTY HAD A PARTY and that it registered a domain name <smartyhadaparty.com>. The Panel notes that the Complainant has used both the trade mark and the domain name in relation to the Complainant’s goods and services since that time. Under all of these circumstances, 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. The Respondent has not rebutted these claims and the Panel is of the view that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Respondent is not making a legitimate offering of its own at the website of the disputed domain name. It is merely providing links for potential visitors to click on if they are interested in a particular item on the website. Once a visitor has clicked on one of these links, he is taken to some other website relating in some way to the product or service of interest to the visitor. These are click through websites and the owner of the website will obtain revenue from the entity whose goods or services are there advertised.
The Complainant alleges that the Respondent has set up the website at the disputed domain name in order to benefit in this way and that, now that the disputed domain name has been registered, it is continuing making revenue from click-through links. The Panel notes that the Respondent has not lodged any documents or taken any part in this proceeding in spite of the very substantial efforts of the Center to include it. Under all of these circumstances, the Panel finds that the disputed domain name was registered in bad faith 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 <smartyhasaparty.com> be transferred to the Complainant.
Date: January 25, 2013