WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Redbubble Pty Ltd. v. Moniker Privacy Services / Standard Bearer
Case No. D2013-1388
1. The Parties
The Complainant is Redbubble Pty Ltd. of Melbourne, Victoria, Australia, represented by Think IP Strategy, Australia.
The Respondent is Moniker Privacy Services of Portland, Oregon, United States of America (“US”) / Standard Bearer of St. John’s, Antigua and Barbuda.
2. The Domain Name and Registrar
The disputed domain name <wwwredbubble.com> is registered with Udamain.com LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2013. On August 6, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 14, 2013, 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 August 15, 2013, 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 August 19, 2013.
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 August 20, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 9, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 11, 2013.
The Center appointed Jane Lambert as the sole panelist in this matter on September 18, 2013. 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
According to the Amended Complaint the Complainant is a limited company incorporated in the Australian state of Victoria.
The Amended Complaint does not state the business of the Complainant but a Google search of “Redbubble Pty Ltd.” by the Panel on September 27, 2013 revealed a URL at “www.redbubble.com”. The Panel keyed in that URL and found a website offering t-shirts, mobile phone cases, wall coverings and other products that appear to have been designed by artists and designers who had registered with the website. On the “About” page the site described itself as “quite simply the finest and most diverse creative community and marketplace on the interlink”.
It appears from the Amended Complaint that the Complainant has registered the word REDBUBBLE as a trade mark for a various goods and services in several countries around the world including the following:
- US trade mark number 3910313 with effect from January 25, 2011 for:
- Jackets; t-shirts; aprons; shorts; pants; sports uniforms; cyclists’ clothing, namely, jerseys and shorts; headbands; hoods; gloves; waterproof jackets and pants in class 25; and
- Photo printing; framing of pictures; framing of works of art; photographic film printing; photographic image processing; photographic printing; photographic processing; printing; textile printing; T-shirt printing in class 40;
- US trade mark 3669552 with effect from August 18, 2009 for:
- Works of creative expression, namely, photographs, paintings, art prints, graphic and printed art reproductions, lithographic works of art, calendars, greeting cards, albums, books featuring art reproductions and graphic prints, bookmarks, magazines featuring art reproductions and graphic prints, pictures, portraits, postcards, posters, stationery, and stickers in class 16; and
- Online retail store services featuring works of creative expression, in the nature of photographs, printed apparel, magazines and digital arts; advertising and promotional services of art and creative works; consultancy in the field of advertising of creative works; organizing of exhibitions for commercial or advertising purposes related to works of creative expression, including, but not limited to, photographs, printed apparel, magazines, and digital arts; publicity services, namely, promoting and marketing the goods and services of others through electronic communication means and via online distribution of advertisements and commercial announcements
There are corresponding registrations in Australia, Canada, the European Union, New Zealand, Norway, China, India, Japan, Russian Federation, South Africa, Republic of Korea, Switzerland, Argentina, Brazil, Mexico, Philippines, Thailand and Singapore.
The Panel tried to visit “www.wwwredbubble.com” and was diverted to “ww4.wwwredbubble.com” where she found what appears to be a pay-per-click website. The landing page has a photograph of a young woman. To the left of her picture there is a column of “Related Links” to “Art Design”, “Custom Wall Calendars” and the like. There are similar “Related Links” at the base of the page.
The Complainant says very little about the Respondent other than the first is a privacy service and the second is in Antigua and Barbuda. It has found no evidence that either of them is known by or has used a name or mark corresponding to the disputed domain name and notes the common typographical error of omitting the full stop between the initials “www” and the Complainant’s domain name.
5. Parties’ Contentions
The Complainant claims the transfer of the disputed domain name on the grounds that:
- the disputed domain name is confusingly similar to trade marks in which it has rights;
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name was registered and is used in bad faith.
As to the first element the Complainant relies on the US trade mark registrations mentioned above and the corresponding registrations elsewhere.
In respect of the second element the Complainant relies on the searches that indicate that neither the Respondent is known as REDBUBBLE nor has used that mark.
As for the third element, the Complainant says that the Respondent intentionally attempts to attract for commercial gain, Internet users to the website of the Respondent, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website of the Respondent but does not plead any facts or matters in support of that contention.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to 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.
In determining whether a domain name has been registered and is being used in bad faith, paragraph 4(b) of the Policy lists a number of circumstances which if found to be present shall be evidence of registration and use in bad faith.
A. Identical or Confusingly Similar
The Complainant has registered the word REDBUBBLE as trade marks in at least one country and appears to be the proprietor of such marks. The disputed domain name incorporates that mark together with the initials “www”. Internet users wishing to visit the Complainant’s website can be expected occasionally to omit the full stop between “www.” and the Complainant’s domain name and thus stumble upon the pay-per-click website at the disputed domain name. It follows that the first element is present.
B. Rights or Legitimate Interests
As it is difficult to prove a negative, the Complainant has only to show that it has made reasonable enquires to ascertain whether the Respondent has rights or legitimate interests in the disputed domain name. Once the Complainant has done that it is up to the Respondent to show that it does indeed have such rights in the disputed domain name. As the Respondent has failed to reply to the Complainant’s contentions and in the absence of any evidence or indication to the contrary, the Panel must conclude that the second element is present.
C. Registered and Used in Bad Faith
Although this Panel notes that the Complainant has stated one of the circumstances from which bad faith in registration and use may be inferred but has given no particulars in support of its allegation, the Panel has visited “www.wwwredbulbble.com” and seen the landing page. This Panel has found the necessary evidence from her own enquiries. This Panel further notes that a screen dump of the landing page was in the case file.
One of the circumstances in paragraph 4(b) of the Policy is as follows:
“‘(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 website or location or of a product or service on your website or location.”
The Panel has already held that the disputed domain name is confusingly similar to the Complainant's marks and that some of Internet users looking for the Complainant’s website will stumble across the Respondent’s website by mistyping the URL for the Complainant’s website. Users will be attracted to the Respondent’s website as a result of the Respondent’s use of the disputed domain name. Some of those users are likely to click the sponsored links or searches which will generate revenue. Such revenue would constitute “commercial gain”.
It follows that all the circumstances of paragraph 4(b)(iv) of the Policy are met and that there is evidence of registration and use in bad faith. Accordingly, the Panel concluded that the third element is present.
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 <wwwredbubble.com> be transferred to the Complainant.
Date: September 28, 2013