WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nobis Inc. v. Darren Smile
Case No. D2014-0069
1. The Parties
The Complainant is Nobis Inc. of Markham, Ontario, Canada, represented by Gowling Lafleur Henderson, LLP, Canada.
The Respondent is Darren Smile of Maidstone, Cuba.
2. The Domain Name and Registrar
The disputed domain name <nobiss.com> (the “Domain Name”) is registered with Realtime Register B.V. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 17, 2014. On January 17, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 20, 2014, 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 January 23, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 12, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 12, 2014.
The Center appointed Nicholas Smith as the sole panelist in this matter on February 20, 2014. 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 a company based in Canada that sells jackets, headwear and outerwear accessories under the brand Nobis. The Complainant has been using the Nobis name in respect of its products since at least 2008 and sells its products by way of its online store and through distributors located in more than 20 countries including Canada, the United States, Korea and Norway.
The Complainant is the owner of a word trade mark consisting of NOBIS (the “NOBIS Mark”), which the Complainant first registered in Canada in 2008. The Complainant operates an active website at “www.nobis.com” (the “Complainant’s website”) from which it sells its products worldwide.
The Domain Name <nobiss.com> was created on October 18, 2013. It currently resolves to an Internet site (the “Respondent’s Website”) which is very similar to the Complainant’s website and makes reference to the Complainant’s jackets and other outerwear accessories by name. It appears to offer the Complainant’s products for sale and according to the Complaint “includes use of copyrighted Nobis pictures, repeated use of the NOBIS Trade-marks, apparent offering for sale of Nobis branded products and an online forum for ostensibly purchasing Nobis branded wares.”
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s NOBIS Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the NOBIS Mark having registered the NOBIS Mark in Canada.
The Domain Name consists of the NOBIS Mark in its entirety with the addition of the letter “s”. The Domain Name is practically identical to the Complainant’s NOBIS Mark and is clearly designed to trap an unwary typist who double-strikes the closing “s” and is directed to the Respondent’s Website rather than the Complainant’s genuine website.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known as the Domain Name, nor does the Respondent have any authorization from the Complainant to register the Domain Name. The Respondent is using the Domain Name to divert Internet traffic to the Respondent’s Website that is deliberately and maliciously attempting to defraud customers and trade on the popularity of the NOBIS brand. This constitutes prima facie evidence of no rights or legitimate interests.
The Domain Name was registered and is being used in bad faith. The Domain Name resolves to a website that advertises the Complainant’s products for the purpose of either selling consumers fraudulent knock-offs or enticing consumers to make fraudulent purchases. It is the clear and obvious intention of the Respondent to attract consumers to its website under the misimpression that it is the Complainant’s website and to profit from this confusion. This is evidenced by the scraping of content from the Complainant’s website to render the Respondent’s Website virtually indistinguishable from the Complainant’s website. The Respondent’s conduct amounts to registration and use of the Domain Name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the NOBIS Mark, having registrations for the NOBIS Mark as a trade mark in Canada.
The Domain Name consists of the NOBIS Mark, with the addition of the letter “s”. The addition of the letter “s” does not prevent a finding of confusing similarity. An individual viewing the Domain Name may be confused into thinking that the Domain Name refers to a site run by the Complainant. Alternatively an individual seeking to access the Complainant’s website at “www.nobis.com” may accidently press the “s” key twice and be taken to the Respondent’s site. The Panel finds that the Domain Name is confusingly similar to the Complainant’s NOBIS Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“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 your 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 legitimate non-commercial 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.” (Policy, paragraph 4(c))
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the NOBIS Mark or a mark similar to the NOBIS Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use.
The Respondent uses the Domain Name to operate a website to sell outerwear under the NOBIS brand name. Although the Complainant asserts that the clothing offered is counterfeit, there is little or no evidence to support this assertion one way or another.
If the outerwear sold on the Respondent’s Website is counterfeit, the Respondent’s use of the Domain Name does not grant it rights or legitimate interests. The same applies if the Respondent is using the Domain Name to commit a fraud on potential clients.
If the Respondent is offering genuine Nobis products from the Respondent’s Website, such use does not in the present circumstances grant it rights and legitimate interests. The principles that govern whether a reseller of genuine goods has rights or legitimate interests have been set out in a variety of UDRP Decisions, starting with the case of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) summarizes the consensus views of UDRP Panels in response to the question about whether a reseller/distributor of trademarked goods or services has rights or legitimate interests in a domain name which contains such a trademark in the following manner:
“Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder. The respondent must also not try to "corner the market" in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark.”
In this case, the Respondent’s Website does not accurately or prominently disclose the Respondent’s relationship with the Complainant, in particular that it is not an authorized dealer or has any particular connection with the Complainant. Rather, its prominent display of the NOBIS Mark and similar content to the Complainant’s website gives the impression that the Respondent’s Website is the official website of the Complainant. Members of the public who are interested in Nobis products may visit the Respondent’s Website on the assumption that the Respondent is the Complainant itself or an authorized dealer or reseller of Nobis products. This is not the case. In the event that the Respondent is reselling genuine Nobis products, its use in its present form does not grant it rights or legitimate interests in the Domain Name.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Name under the Policy. In the absence of such a response the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name’ registration to the Complainant who is the owners of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) The Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. (Policy, paragraph 4(b))
The Panel finds that it is likely that the Respondent was aware of the Complainant and its reputation in the NOBIS Mark at the time the Domain Name was registered. The Domain Name resolves to a website that displays the NOBIS Mark, reproduces the contents of the Complainant’s website and sells products branded with the NOBIS Mark.
The Respondent’s conduct in registering the Domain Name when it was aware of the Complainant’s rights and lacked rights and legitimate interests of its own amounts to registration in bad faith.
The Respondent registered the Domain Name for the purposes of operating a website specifically to sell either counterfeit or resold Nobis products. The Respondent is using the Domain Name that is confusingly similar to the NOBIS Mark and in which it does not have rights or legitimate interests to sell products, be they legitimate or otherwise, branded with the NOBIS Mark in competition with the Complainant. Consequently the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant and the Complainant’s NOBIS Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website.
Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under 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 Domain Name <nobiss.com> be transferred to the Complainant.
Date: February 24, 2014