WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
True & Co. v. Web Parking, Inc / Registration Private, Domains by Proxy, LLC
Case No. D2016-0634
1. The Parties
The Complainant is True & Co. of San Francisco, California, United States of America (“United States”), represented by Kilpatrick Townsend & Stockton LLP, United States.
The Respondent is Web Parking, Inc. of Denver, Colorado, United States / Registration Private, Domains by Proxy, LLC of Scottsdale, Arizona, United States.
2. The Domain Name and Registrar
The disputed domain names <trueand.co>, <trueandco.co> and <trueandcompany.com> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2016 against both Web Parking, Inc and Registration Private, Domains by Proxy, LLC. On April 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 4, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent, Web Parking, Inc, is listed as the registrant of all three disputed domain names 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 proceedings commenced on April 13, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 3, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 4, 2016.
The Center appointed Angela Fox as the sole panelist in this matter on May 13, 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.
4. Factual Background
The Complainant is a designer and online retailer of custom-fitted bras as well as lingerie, lounge wear, and other intimate apparel in the United States. It launched its business under the trademark TRUE & CO. on May 30, 2012, and has been trading since then under that mark in the field of custom-fitted bras and intimate apparel. It carries out that business online through its website at “www.trueandco.com”.
The Complainant is the proprietor of United States federal trademark registration no. 4,669,407 for TRUE & CO. in a stylised logo form, filed on January 31, 2012 and registered on January 13, 2015 for online retail store services for intimate apparel and the provision of related personal shopping services over the Internet in Classes 35 and 45, details of which were annexed to the Complaint.
The launch of the Complainant’s business under the mark TRUE & CO. on May 30, 2012 was accompanied by widespread press attention. Annexed to the Complaint were copies of press reports and media commentary on the Complainant’s launch on technology news sites such as CNET, Mashable, and TechCrunch, as well as traditional news outlets. The launch itself took place at a California tech conference and included the announcement that the Complainant had raised USD 2 million in its first round of funding, including from high-profile investors.
The disputed domain names were all registered on May 30, 2012, the date of the Complainant’s launch.
The disputed domain names <trueandcompany.com> and <trueandco.co> both resolve to a website at “www.thirdlove.com”, a competing online retailer of bras and other intimate apparel. The disputed domain name <trueand.co> resolves to a click-through revenue portal containing links to adult sex and dating-related content.
5. Parties’ Contentions
The Complainant submits that the disputed domain names are all owned and/or controlled by the same entity and should be dealt with in a single Complaint.
The Complainant further submits that the disputed domain names are confusingly similar to its trademark TRUE & CO., which it has registered in logo form in the United States. The Complainant states that the Respondents have no legitimate rights or interests in the disputed domain names, which are in use to divert Internet users to a competing website or to a website offering pay-per-click links to third-party content. The Complainant further contends that the disputed domain names were acquired and have been used by the Respondents in bad faith, noting that the registration of the disputed domain names took place on the very same day on which the Complainant’s high-profile launch took place.
The Respondent did not reply to the Complainant’s contentions and are in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent’s default.
6. Discussion and Findings
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 names are identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in the domain names; and
(iii) the domain names have been registered and are being used in bad faith.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.
6.1 Common Ownership or Control
The Complainant has argued that the disputed domain names, although facially registered to different registrants, are under common ownership or control, making this case suitable for consolidation.
However, the Registrar has confirmed that all three disputed domain names are in fact registered to the same entity – the Respondent “Web Parking, Inc.”
The Panel accordingly need not engage in a consolidation analysis.
A. Identical or Confusingly Similar
The Complainant has shown that it has registered trademark rights in TRUE & CO. in the United States.
The disputed domain names are essentially identical or closely similar, to the Complainant’s registered trademark. The natural reading of the disputed domain name <trueand.co> is essentially “True & Co.” The mere fact that “.co” also functions as a country code Top-Level Domain (“ccTLD”) domain name suffix does not strip it of its significance in how the domain name, overall, is likely to be perceived and understood. The disputed domain name <trueandco.co> is made up of a name that corresponds aurally and conceptually to “True & Co.” followed by a non-distinctive ccTLD suffix. The disputed domain name <trueandcompany.com> is merely a version of “True & Co.” without the abbreviation of the word “Company”.
The Complainant therefore succeeds under the first element of the Policy.
B. Rights or Legitimate Interests
There is no relationship between the Complainant and the Respondent, and the Complainant has never authorized, licensed or permitted the Respondent to use the TRUE & CO. trademark or marks confusingly similar to it. The Respondent does not appear to have been commonly known by a name corresponding to the disputed domain names.
There is nothing on the facts of this case to suggest that the Respondent could invoke any of the circumstances listed in paragraph 4(c) of the Policy in order to demonstrate a right or legitimate interest in the disputed domain names.
Two of the disputed domain names have been used to re-route Internet users to a competing third-party website also selling intimate apparel. The use of identical or confusingly similar domain names to misleadingly divert consumers to a competitor of a complainant is not use in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy. Such a “bait and switch” strategy lacks bona fides and does not give rise to a right or a legitimate interest under the Policy (see inter alia Six Continents Hotels, Inc., v. EnterSports Inc., WIPO Case No. D2008-1951, in which the panel stated, “Respondent’s predatory use of the domain name as the address of a website that, at one time, advertised hotel services competing with the Complainant’s business does not constitute a bona fide use of the domain name”).
One of the disputed domain names, <trueand.co>, has been used in respect of a click-through advertising portal offering links to adult sex and dating-related content. This appears to be a standard pay-per-click landing site from which the Respondent in question is likely to have been deriving click-through income. Indeed, this allegation was put to the Respondents, who did not refute it. This disputed domain name is virtually identical to the Complainant’s trademark, and its attractiveness as an address for a pay-per-click landing page appears to be based on the inclusion of the Complainant’s distinctive trademark. The use of the disputed domain name to host pay-per-click links shows that the Respondent in question has sought to gain financially from the confusing similarity of the disputed domain name with the Complainant’s trademark. Such activities do not, in the Panel’s view, amount to bona fide commercial use. They are not, moreover, a legitimate noncommercial or fair use within the meaning of paragraph 4(c)(iii) of the Policy because the Respondent appears to be profiting from click-through income.
The burden of proving absence of a right or legitimate interest in a disputed domain name falls on complainant, but panels have long recognized that the information needed to prove such a right or interest is normally in the possession of respondent (see, for instance, The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064). In this case, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The disputed domain names are all inherently likely to mislead Internet users, and the Respondent has not attempted to argue, nor is there any evidence that it could realistically argue, that it has rights or legitimate interests in them.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
The Complainant has filed evidence that the launch of its TRUE & CO. trademark on May 30, 2012 was attended by widespread publicity and had attracted high-profile investors.
All three of the disputed domain names were registered on the same date as the Complainant’s launch. Moreover, two of them have since been used to divert consumers to the website of a competitor in the field of online retail of intimate apparel. One of them has been used to divert consumers to a click-through advertising site containing links to adult third-party content of a nature such as to embarrass the Complainant. The evidence is sufficient to persuade the Panel that, on the balance of probabilities, the Respondent learned of the Complainant’s launch and registered the disputed domain names with the intention of disrupting the Complainant’s business by embarrassing the Complainant and hiving off potential customers to a competitor. The Respondent has made no effort to explain its conduct by filing a response.
For the sake of completeness the Panel, noting that the disputed domain names predate the registration date listed on the Complainant’s trademark certificate, cites the following with approval:
“When the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This has been found to occur…where the potential mark in question is the subject of substantial media attention (e.g., in connection with a widely anticipated product or service launch) of which the respondent is aware, and before the complainant is able to obtain registration of an applied-for trademark, the respondent registers the domain name in order to take advantage of the complainant's likely rights in that mark.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 3.1.
In the Panel’s view the Respondent’s actions constitute registration and use of the disputed domain names in bad faith. The Panel so finds.
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 names, <trueand.co>, <trueandco.co> and <trueandcompany.com> be transferred to the Complainant.
Date: June 6, 2016