WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

United Arrows Limited v. DotBadger Domains

Case No. D2016-0114

1. The Parties

The Complainant is United Arrows Limited of Tokyo, Japan, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.

The Respondent is DotBadger Domains of Praha, Czech Republic.

2. The Domain Name and Registrar

The disputed domain name <united-arrows.com> is registered with Rebel.com Corp. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2016. On January 20, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on January 26, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 15, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 16, 2016.

The Center appointed Christian Schalk as the sole panelist in this matter on February 24, 2016. 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.

The Panel has reviewed the record and confirms the Complaint’s compliance with the formal requirements. The Complaint was properly notified to the Respondent in accordance with paragraph 2(a) and (b) of the Rules. The language of the proceeding is English.

4. Factual Background

The Complainant operates a group of retail clothing stores selling men’s and women’s apparel, accessories and other products. The Complainant opened its first retail location in 1990 in Japan. Since then the Complainant has grown substantially and reached annual turnovers of almost USD 200 million. The Complainant markets its products in many countries of the world and also via the Internet. In this context, it has a strong presence also in social media such as Facebook, Twitter, YouTube and Instagram. Its activities have received substantial press coverage in prestigious fashion publications such as Elle, Esquire and Vogue.

The Complainant owns many trademark rights in the term “united arrows”, for instance,

- Japanese trademark registration No. 3165993 for UNITED ARROWS, registration date June 28, 1996, covering services in International class 35;

- Japanese trademark registration No. 5361355 for UNITED ARROWS, registration date October 15, 2010, covering goods in International classes 9, 14, 18 and 25;

- International Registration No. 1122621 for UNITED ARROWS, registration date August 16, 2012, covering goods in International classes 18 and 25;

- European Community Trademark registration No. 5941976 for CAMOSHITA UNITED ARROWS, registration date April 10, 2008, covering goods in International classes 14, 18 and 25;

- European Community Trademark registration No. 10774537 for SOVEREIGN UNITED ARROWS TOKIO, registration date February 9, 2013, covering goods in International class 25;

The Complainant also owns several domain names featuring the trademark UNITED ARROWS such as <united-arrows.jp> which refers to its retail website and <united-arrows.co.jp> which is linked with the Complainant’s corporate website.

The Respondent registered the disputed domain name on June 17, 2015. The disputed domain name is linked with a parking website where it is stated on its top: “the [disputed] domain name may be for sale. Click here for more info.” Internet users clicking on that link are directed to the website “www.parklogic.com” where they are invited to become members of ParkLogic’s marketplace. There, they can make an offer for acquiring the disputed domain name. This website includes also a dynamic set of websites including such where visitors are offered the chance to win gift cards or electronics. On February 29, 2016, when the Panel reviewed the website, apparently sponsored links guided Internet users to other websites where clothes and other accessories of third companies were offered for sale.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the disputed domain name <united-arrows.com> is confusingly similar to its registered UNITED ARROWS trademarks since it incorporates the Complainant’s trademarks in its entirety. The Complainant argues further that the separation of the terms “united” and “arrows” by a hyphen is not sufficient to distinguish the disputed domain name from the Complainant’s trademarks.

The Complainant alleges also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant argues that the Respondent must have been on actual, or at a minimum, constructive notice of the Complainant’s rights in the UNITED ARROWS marks before it registered the disputed domain name. The Complainant pretends further that there is no relationship between the parties that give the Respondent any license, permission or authorization to register and/or use the disputed domain name. The Complainant is also convinced that the Respondent’s current use of the disputed domain name in connection with a website which is nothing more than a parked site that includes a solicitation to visitors to make an offer to purchase the disputed domain name cannot constitute a bone fide offering of goods or services or a legitimate interest in the disputed domain name. The Complainant fears in this context that if Internet users would visit the website to which the disputed domain name resolves, they could believe that this website is somehow related or has been approved by the Complainant.

Furthermore, the Complainant alleges that the disputed domain name was registered and is being used in bad faith. The Complainant argues that the Respondent has chosen the disputed domain name to create an association with the Complainant. The disputed domain name incorporates a confusingly similar version of the Complainant’s registered UNITED ARROWS trademarks. Given the reputation of these trademarks, consumers are likely to believe that the disputed domain name is related to or associated with the Complainant. Therefore, the Complainant is convinced that the only reason why the Respondent registered the disputed domain name was to intentionally confuse consumers, to trade on the Complainant’s rights and reputation and to drive traffic to its website for its own commercial benefit. The Complainant cites in this context Houghton Mifflin Co. v. The Weathermen, Inc., WIPO Case No. D2001-0211 and Philip Morris International v. Alex Tsypkin, WIPO Case No. D2002-0946 where the panels found for registration in bad faith of the disputed domain names subject to that cases.

The Complainant believes that the disputed domain name is also used in bad faith. It refers to World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001 and Six Continents Hotels, Inc. v. Interbase, Inc., WIPO Case No. D2002-1045 where the panels have decided that an offer to sell to a trademark owner far in excess of actual out-of-pocket expenses is evidence of bad faith. The Complainant argues further that the ultimate effect of any use of the disputed domain name by the Respondent will be to cause confusion with the Complainant and therefore, the registration and use of the disputed domain name must be considered to be in bad faith. In addition, the Respondent’s activities concerning the disputed domain name are also in direct violation of paragraph 4(b)(iv) of the Policy. The very fact that the Respondent has registered the disputed domain name establishes opportunistic bad faith registration and use and the Complainant cites, among others, Pharmacia & Upjohn Company v. Moreonline, WIPO Case No. D2000-0134 and LEGO Juris A/S v. Domain Park Ltd., WIPO Case No. D2010-0138, in order to substantiate its arguments.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law it deems applicable (paragraph 15(a) of the Rules). Pursuant to paragraph 4(a) of the Policy, the disputed domain name can be transferred only where the Complainant has proven each of the following three elements:

(i) the disputed domain name is identical or confusingly similar to a trademark 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.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established trademark rights in the word combination UNITED ARROWS. The disputed domain name is nearly identical to the Complainant’s trademark.

As it has been decided by previous UDRP panels, incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see for instance, Casa Editorial El Tiempo, S.A. v. Montanya Ltd, WIPO Case No. D2009-0103; Todito.com v. Francisco Gómez Ceballos, WIPO Case No. D2002-0717; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615; Compagnie Générale des Etablissement MICHELIN v. Lost in Space, SA, WIPO Case No. D2002-0504; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047).

This is also the case where the only element, which differ the disputed domain name from the Complainant’s trademark is a hyphen between the terms “united” and “arrows”. Such a very minor difference has no relevance for the determination of confusing similarity between the disputed domain name and the Complainant’s trademark UNITED ARROWS.

Furthermore, the “.com” Top-Level Domain suffix in the disputed domain name does not affect the determination that the disputed domain name is nearly identical with the UNITED ARROWS mark in which the Complainant has rights (see also Compagnie Générale des Etablissements Michelin v. Trendimg, WIPO Case No. D2010-0484; Köstrizer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936; Laboratoire Pharmafarm (SAS) v. M. Sivaramakrishan, WIPO Case No. D2001-0615 and cases cited therein).

For all these reasons, the Panel finds that the Complainant has fulfilled the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Based on the submissions and materials filed in this case, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

The Respondent has not provided any evidence of circumstances specified in paragraph 4(c) of the Policy or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. Specifically, the Panel finds no evidence that the Respondent has been or is commonly known by the disputed domain name. The Respondent is neither affiliated with the Complainant nor has a license to use its trademark.

The Respondent has also not rebutted the Complainant’s allegations and has not provided the Panel with any explanations as to the Respondent’s rights or legitimate interests. On the contrary, it appears to the Panel that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services.

The Respondent has directed the disputed domain name to a website where Internet users are made aware of the fact that the disputed domain name is offered for sale and that they are invited to offer a price for acquiring the disputed domain name. Therefore, the only reason for the Respondent to register the disputed domain name was, on balance, to capitalize on the Complainant’s goodwill by redirecting Internet traffic intended for the Complainant away from it to the Respondent’s website. The only purpose for such behaviour is, to generate income from selling the disputed domain name to someone who offers a substantive amount of money for it to the Respondent. This cannot constitute a bona fide or legitimate use of the disputed domain name.

The Panel finds for these reasons that the Respondent has no rights or legitimate interests in the disputed domain name, and therefore, the requirement of paragraph 4(a)(ii) of the Policy is met.

C. Registered and Used in Bad Faith

The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Policy, paragraph 4(b) sets forth four non-exclusive circumstances, which evidence bad faith registration and use of domain names:

(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark 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 domain name; or

(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trademark 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 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, Internet 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.

According to the materials brought before the Panel, the Panel finds that the disputed domain name has been registered and is being used by the Respondent in bad faith in accordance with paragraph 4(b)(iv) of the Policy.

It is a principle considered under prior UDRP decisions (see, for instance, Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022) and under the Policy (see paragraph 2), that a domain name registrant represents and warrants to the concerned registrar that to its knowledge, the registration of the disputed domain name will not infringe the rights of any third party.

The Panel finds that the Respondent must have been aware of the Complainant’s trademark and its products when it registered the disputed domain name. “United Arrows” is an unusual word combination also in the English language. Furthermore, had the Respondent carried out even basic searches in search engines like Google or Yahoo in respect of “united arrows” then these would have yielded obvious references to the Complainant and its use of the word combination of “united” and “arrows” as a trademark.

The Panel finds further, that the Respondent is also using the disputed domain name in bad faith.

The Respondent has directed the disputed domain name to a website where the disputed domain name is offered for sale. There is no doubt for the Panel that the purchase price to be offered would certainly be far in excess of the out-of pocket cost directly related to the disputed domain name. Furthermore, on the website to which the disputed domain name currently resolves, there are advertising links which appear apparently on an automatically generated basis. Even if such advertising links served up to visitors on the website associated with the disputed domain name are automated, the Respondent remains responsible for such use (see also Rolex Watch U.S.A., Inc. v. Vadim Krivitsky, WIPO Case No. D2008-0396). There is no evidence brought before the Panel that the Respondent did anything to prevent the inclusion of such links, which profit from trading on third parties’ trademarks. And even if the Respondent had no direct influence over what sponsored links were chosen, it has no impact on the Panel’s finding for bad faith use of the disputed domain name. The Respondent must have known that by using a parking service, some sponsored links would be generated and that Internet users seeking information about the Complainant’s products would then find themselves at a website upon which products and services related or unrelated to the Complainant were advertised (see also Owens Corning v. NA, WIPO Case No. D2007-1143). It does also not matter whether the Respondent itself or a third party reaps the profits from such products or services (see Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912) because the reason for such profits would be always the registration of the disputed domain name by the Respondent.

Therefore, the Panel is convinced that the Respondent’s main purpose was to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

Another indication of bad faith use of the disputed domain name is that it appears that a circumvention mechanism (robots.txt) is used to prevent access to historical website content on a repository such as the Internet archive (at “www.archive.org”). The Panel is convinced that the only reason for such behaviour is to block access to relevant evidence in this case.

Furthermore, the Respondent has apparently also provided inaccurate contact details when it registered the disputed domain name or failed at least to correct such false contact details. The Center has used the contact details given in the WhoIs record for the disputed domain name and those provided by the Registrar when it tried to contact the Respondent. However, the courier service provider could not reach the Respondent in order to deliver the Written Notice of the Complaint. Therefore, the Panel notes that the Respondent may have given incorrect contact details to frustrate or at least to delay this proceeding (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

Given all the facts and circumstances of this case, the Panel finds that the disputed domain name was registered and is being used in bad faith.

7. Decision

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 <united-arrows.com> be transferred to the Complainant.

Christian Schalk
Sole Panelist
Date: March 6, 2016