WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
M.F.H. Fejlesztõ Korlátolt Felelõsségû v. Satoshi Shimoshita
Case No. D2014-1726
1. The Parties
The Complainant is M.F.H. Fejlesztõ Korlátolt Felelõsségû of Budapest, Hungary, represented by Novagraaf Nederland B.V., Netherlands.
The Respondent is Satoshi Shimoshita of Tokyo, Japan.
2. The Domain Name and Registrar
The disputed domain name <intimissimo.com> ("Disputed Domain Name") is registered with eNom (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 2, 2014. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. Also on October 2, 2014, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing 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 proceeding commenced on October 9, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 29, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 31, 2014.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on November 18, 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 sells lingerie and women's clothing under the INTIMISSIMI trade mark, and currently has about 1,200 stores across 31 countries. The Complainant holds registered trade mark rights in its INTIMISSIMI mark dating back to 1996, and has registered numerous domain names containing the INTIMISSIMI brand in a variety of country code domain names.
The Respondent is an individual who appears to be based in Japan. He registered the Disputed Domain Name on March 10, 2003.
5. Parties' Contentions
The Complainant's contentions can be summarized as follows:
(a) The Complainant is the registered owner of the INTIMISSIMI trade mark in various jurisdictions, including in the European Union, Canada, New Zealand and 27 other countries designated under its International Registration. The Complainant also registered the domain name <intimissimi.com> on July 27, 1998, and holds various other domain names that incorporate its INTIMISSIMI mark.
(b) The Disputed Domain Name is confusingly similar to the Complainant's INTIMISSIMI trade mark. The only difference between the Disputed Domain Name and the Complainant's INTIMISSIMI mark is the replacement of the last letter "i" with the letter "o". This is a clear case of typo-squatting.
(c) According to the Complaint the Complainant began using the INTIMISSIMI mark in 1986, and now has more than 1,200 stores in 31 different countries around the world. The Complainant's mark is therefore well-known in many countries worldwide and has generated substantial goodwill.
(d) The Respondent registered the Disputed Domain Name on March 10, 2003. The Disputed Domain Name is phonetically, visually and conceptually confusingly similar to the Complainant's registered trade mark. The only difference between the Complainant's mark and the Disputed Domain Name is one letter, and such insignificant modifications to a trade mark is commonly known as "typo squatting".
(e) The website that the Disputed Domain Name resolves to is a parking page. It provides links to online clothing and lingerie stores, which are the same items that are offered by the Complainant. This therefore cannot amount to a bona fide commercial use, since the confusing similarity between the Disputed Domain Name and the Complainant's mark will mislead consumers into thinking that the Respondent's parking page is linked to the Complainant.
(f) The Respondent is more than likely earning pay-per-click revenue from the advertising links that appear on the parking page to which the Disputed Domain Name resolves. The Respondent cannot, therefore, be said to be making a legitimate noncommercial or fair use of the Disputed Domain Name.
(g) The Disputed Domain Name is confusingly similar to the Complainant's trade mark, and the Respondent is intentionally creating initial interest confusion to divert users to the Disputed Domain Name's parking page for commercial gain. This disrupts the Complainant's business. Even if after landing on the Respondent's parking page users were to then realize that he or she had been redirected to another website unconnected to the Complainant, the deliberate creation of initial interest confusion and the consequent diversion of Internet traffic is sufficient to establish bad faith.
The Respondent did not reply to the Complainant's contentions. Whilst failure to file a response does not automatically result in a decision being issued in favor of the Complainant, it may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(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 by the Respondent in bad faith.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the INTIMISSIMI mark, based on its numerous trade mark registrations, including its trade mark registrations in the European Union and Canada.
It is a well-established rule that a domain name which contains a common or obvious misspelling of a trade mark will normally be found to be confusingly similar to such trade mark, where the misspelled trade mark remains the dominant or prominent element of the domain name (Fuji Photo Film U.S.A., Inc. v. LaPorte Holdings, WIPO Case No. D2004-0971). In this case, the only difference between the Disputed Domain Name and the Complainant's INTIMISSIMI trade mark is the use of the letter "o" instead of the letter "i" at the end of the Disputed Domain Name, which adds no distinctive element and appears to be a clear case of "typo squatting". The Panel therefore finds that the Disputed Domain Name is confusingly similar to the Complainant's trade mark.
Furthermore, in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the domain extension, in this case ".com" should generally be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd., WIPO Case No. D2006-0762).
The Panel accordingly finds that the Disputed Domain Name is identical or confusingly similar to the INTIMISSIMI trade mark in which the Complainant has rights, and that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent's use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if it has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant is required to establish a prima facie case in respect of the Respondent's lack of rights or legitimate interests in the Disputed Domain Name. The Respondent will then bear the burden to come forward with evidence rebutting the Complainant's prima facie case. Where the Respondent fails to do so, paragraph 4(a)(ii) of the Policy shall be deemed to have been satisfied (see paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 and Accor v. Eren Atesmen, WIPO Case No. D2009-0701).
In the absence of any contrary evidence, the Panel accepts that the Respondent is not a licensee nor is it associated in anyway with the Complainant that could give rise to any licence, permission or other right by which the Respondent could own or legitimately use the Complainant's INTIMISSIMI mark. The Panel has also seen no evidence to demonstrate that the Respondent has become commonly known by the Disputed Domain Name. The Panel is therefore of the view that a prima facie case has been established and it is for the Respondent to prove it has rights or legitimate interests to the Disputed Domain Name. However, since no response was filed by the Respondent, the Panel will determine whether or not the Respondent has any rights or legitimate interests in the Disputed Domain Name based on the reasonable inferences that can be drawn from the Complainant's evidence.
The Panel notes that the Respondent has "parked" the Disputed Domain Name, and the parking page contains a number of sponsored links, including links to competitors of the Complainant. It is reasonable to infer that the Respondent earns pay-per-click revenue in relation to such sponsored links. While parking pages may be permissible in some circumstances, under paragraph 2.6 of WIPO Overview 2.0, a parking page would not by itself confer rights or legitimate interests in a domain name. This is especially the case where a disputed domain name was registered with a trade mark owner's mark in mind in the hope and expectation that confused Internet users searching for the trade mark owner will be directed to the Respondent's parking page for commercial gain. Such activity does not provide a legitimate interest in that domain name under the Policy (Owens Corning v. NA, WIPO Case No. D2007-1143).
For the foregoing reasons, the Panel finds that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides the following non-exhaustive list of circumstances as evidence that a respondent has registered and used a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or acquired the Disputed 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 trade mark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the Disputed Domain Name; or
(ii) the Respondent has registered the Disputed Domain Name in order to prevent the Complainant from reflecting its 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 Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Disputed Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, users to its 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 its website or location or of a product or service on its website or location.
It is a well-established principle that registration of a domain name that is confusingly similar to a well-known trade mark by any entity that does not have a relationship to that mark can amount to sufficient evidence of bad faith registration and use (Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163). Given that the Complainant began using the INTIMISSIMI mark since at least 19961 and has stores all over the world, including in Asia, the Respondent is more likely than not aware of the reputation and business activities of the Complainant. Further, INTIMISSIMI is a distinctive term, and no explanation has been provided by the Respondent as to how the Respondent came up with the confusingly similar Disputed Domain Name. It also cannot be mere coincidence that the related searches and sponsored links that appear on the parking page to which the Disputed Domain Name resolves include lingerie and women's clothing, which is the Complainant's line of business. The Panel finds that in the absence of any evidence to the contrary, the Respondent must have registered the Disputed Domain Name with the Complainant's mark in mind, in order to misdirect Internet users who are searching for the Complainant to the Respondent's parking page.
Using a domain name to intentionally attract Internet users to a website for commercial gain, in an effort to trade on the Complainant's goodwill, is evidence of bad faith registration and use under the Policy (Adobe Systems Incorporated v. Domain OZ, WIPO Case No. D2000-0057). The Panel is of the opinion that this is a clear case of typo-squatting and that the Respondent deliberately registered a domain name with a slight misspelling with the intent to divert Internet users from the Complainant's website to the Respondent's parking page, and constitutes bad faith registration and use.
Lastly, the sponsored links on the Respondent's website direct users to competitors of the Complainant. This acts as further evidence of bad faith use on the part of the Respondent (see Villeroy & Boch AG v. Whois Data Shield/Hong Kong Names LLC., WIPO Case No. D2008-1300 and Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774).
Accordingly, the Panel finds that the Complainant has satisfied 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, <intimissimo.com>, be transferred to the Complainant.
Date: November 28, 2014
1 According to the Complaint the Complainant began using the INTIMISSIMI mark in 1986. However, the Panel notes that print-outs of the Complainant's website attached as an annexure to the Complaint states that the Complainant began using its INTIMISSIMI mark in 1996.