WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Spy Optic Inc. v. WhoisGuard Protected / Thomas, Thomas Jones
Case No. D2013-1649
1. The Parties
Complainant is Spy Optic Inc. of Carlsbad, California, United States of America, represented by Stetina Brunda Garred & Brucker, United States of America.
Respondent is WhoisGuard Protected of Panama City, Panama / Thomas, Thomas Jones, Widefield, Colorado, United States of America.
2. The Domain Name and Registrar
The disputed domain name <spyopticssunglasses.org> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2013. On September 20, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 20, 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 September 23, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on September 24, 2013.
The Center verified that the Complaint, together with the amendment to 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 September 30, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 20, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 21, 2013.
On October 23, 2013, Complainant submitted an unsolicited supplemental filing to the Center.
The Center appointed Timothy D. Casey as the sole panelist in this matter on October 31, 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
Complainant Spy Optic Inc. has registered several United States trademarks; SPYOPTIC, Registration No. 3,648,121 for sunglasses and other classifications on June 30, 2009; SPY, Registration No. 3,750,166 for sunglasses, “on-line retail store services featuring sunglasses,” and other classifications on February 16, 2010; and a graphic mark in the shape of an outline of a plus sign, Registration No. 2,157,268 for sunglasses on May 12, 1998 (collectively, the “Trademarks”). SPY was also earlier registered to No Fear, Inc., Registration No. 1,981,513 for sunglasses and other classifications. Although not stated in the Complaint or the amendment to the Complaint, based on the registered trademarks, it is presumed that Complainant markets, at least, sunglasses.
Complainant registered the domain name <spyoptic.com> on October 4, 2001.
Little is known of Respondent WhoisGuard Protected / Thomas Jones of the Thomas organization. The disputed domain name <spyopticssunglasses.org> was created on March 28, 2013.
The disputed domain name resolved to “www.cheapspyglasses.net” on September 30, 2013, which appeared to be selling a variety of sunglasses and made use of the Trademarks, i.e., SPY and the graphic plus mark are in the heading banner; the products for sale are referred to as “Spy Sunglasses” in text toward the top of the site; and there appear to be links to “Spy Optic” (with space) sunglasses across the banner at the top. The several pairs of sunglasses for sale are also individually labeled “Spy Optics” (with space and as a plural).
5. Parties’ Contentions
Complainant asserts the disputed domain name is identical to Complainant’s trademarks. SPY and SPYOPTIC are inherently distinctive, as evidenced by their listing on the principal register of United States. Complainant characterizes the disputed domain name as consisting of a pluralized version of the trademark SPYOPTIC along with the descriptive term “sunglasses” and the generic top-level domain name (gTLD) “.org”. Complainant believes neither use of a descriptive term such as “sunglasses”, nor the addition of the gTLD “.org”, are elements of distinctiveness that can be taken into consideration when evaluating identity or confusing similarity. Hence Complainant asserts SPYOPTIC is identical to the disputed domain name <spyopticssunglasses.org>.
Complainant asserts Respondent has no rights or legitimate interests in the disputed domain name because there is no relation between the Complainant and the Respondent giving rise to a license or permission to use the Trademarks, or alternately, because the Complainant’s rights in the Trademarks are senior to any rights Respondent may arguably have. Complainant’s use of SPY started at least in 1996 for sunglasses, and started in 2010 for “online retail store services featuring sunglasses,” whereas Respondent’s registration of the disputed domain name did not occur until 2013.
Complainant asserts that Respondent is not making any legitimate noncommercial or fair use of the disputed domain name, and further suggests that the sunglasses being sold on the website reached by the disputed domain name “appear to be counterfeit products.” The goods for sale falsely appear to be Complainant’s goods, but actually compete directly with Complainant’s goods.
Finally, Complainant asserts that the disputed domain name was registered, and is being used, in bad faith. First, bad faith should be found simply when a domain name is registered that is likely confused for a competitor’s trademark, and that the domain name was registered after trademark registration. Second, the main line of products sold by Respondent is sunglasses and that a shopper seeking Complainant’s products would likely be confused into buying Respondent’s products instead.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
As a preliminary matter, the Panel did not find it appropriate or necessary to rely upon the unsolicited supplement to the Complaint filed with Center on October 23, 2013 in the absence of “exceptional circumstances”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.2.
In view of the default and the absence of any reply to the Complaint by Respondent, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interest in the domain name; and
(iii) the domain name has been registered bad is being used in bad faith.
A. Identical or Confusingly Similar
Complainant owns the Trademarks and because of their registration dates, they are presumed to have been in continual use in commerce since at least prior to the registration of the disputed domain name. The disputed domain name contains as the initial characters both the SPY and SPYOPTIC trademarks. The Panel agrees that the addition of “.org” as gTLD is not relevant to the question of identity or confusing similarity. The Panel however disagrees with Complainant’s assertion that a descriptive term, such as “sunglasses,” to the Trademarks should not be taken into consideration for the question of identity or confusing similarity.
Although the disputed domain name is not identical to either SPY or SPYOPTIC, the Panel does find the disputed domain name to be confusingly similar to the SPYOPTIC trademark. The addition of “opticssunglasses” to SPY and the addition of “ssunglasses” to SPYOPTIC causes the disputed domain name to not be identical to any of the Trademarks. The disputed domain name is confusingly similar to the trademarks SPY and SPYOPTIC, however, because the pluralization of SPYOPTIC does nothing to change a consumer’s perspective of the disputed domain name in relation to the SPYOPTIC trademark and the addition of “sunglasses” only serves to enhance the likelihood of confusion. As noted, the Trademarks are registered for sunglasses and Complainant appears to market sunglasses, so appending “sunglasses” to “spyoptics” in the disputed domain name only serves to enhance the confusing similarity between the Trademarks and the disputed domain name.
B. Rights or Legitimate Interests
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. A key fact to be decided here is whether the products being sold from the disputed domain name are counterfeit or legitimate goods. A reseller of Spyoptic sunglasses does not necessarily need a license or other approval from Complainant to sell authentic Spyoptic sunglasses or to correctly label products for sale with the Trademarks. Such use would usually be considered a fair use. Lacking any response from Respondent, the Panel must give some weight to Complaint’s speculation that the products “appear to be counterfeit.” Furthermore, the Panel notes that the website to which the disputed domain name resolved consistently misspelled or incorrectly pluralized the Trademarks, labeling most products as “Spy Optics.” The Panel finds it unlikely that authentic Spyoptic sunglasses would be marketed in such a way. Hence, on balance, the Panel concludes that the products offered for sale were counterfeit and that Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Panel finds that the disputed domain name was registered and is being used in bad faith. The marketing of inauthentic product labeled as associated with the Trademarks to which the disputed domain name is confusing similar is sufficient evidence of bad faith. It seems likely, as Complainant alleges, that Respondent intentionally attempted to attract, for Respondent’s commercial gain, Internet users to the website to which the disputed domain name resolved by creating a disputed domain name that simply combines a plurality of the Trademarks with a descriptive word.
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 <spyopticssunglasses.org> be transferred to the Complainant.
Timothy D. Casey
Date: November 14, 2013