WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NLU Products, L.L.C. v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org / Domain Admin, Private Registrations Aktien Gesellschaft
Case No. D2016-1089
1. The Parties
The Complainant is NLU Products, L.L.C. of Lehi, Utah, United States of America (“United States” or “US”), represented by Thorpe North & Western, United States.
The Respondent is Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org of Nobby Beach, Queensland, Australia / Domain Admin, Private Registrations Aktien Gesellschaft of Kingstown, Saint Vincent and the Grenadines.
2. The Domain Name and Registrar
The disputed domain name <bodygaurdz.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2016. On June 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 2, 2016, 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 June 2, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 8, 2016. The Complainant filed a second amended Complaint on June 11, 2016.
The Center verified that the Complaint together with the amended Complaint and second amended 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 June 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 4, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 6, 2016.
The Center appointed Adam Taylor as the sole panelist in this matter on July 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
Since around 2006, the Complainant has provided screen protectors, protective skins, and cases for mobile phones, smart phones, tablets, and related electronic devices under the mark “Bodyguardz”. The Complainant’s website is at “www.bodyguardz.com”.
The Complainant owns US trade mark no. 3,420,698 for BODYGUARDZ, filed August 22, 2006 and registered April 29, 2008, in class 9.
The disputed domain name was registered on October 13, 2007. The website to which it resolves hosts Pay-Per-Click (PPC) links advertising screen protectors for mobile devices.
5. Parties’ Contentions
A summary of the Complainant’s contentions is as follows:
The disputed domain name is nearly identical to the Complainant’s mark. It is an obvious misspelling and a classic example of “typo-squatting”. The Complainant’s mark is the dominant or principal impression created by the disputed domain name.
The Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services.
The Respondent is not commonly known by the disputed domain name.
The Respondent is not making any legitimate noncommercial or fair use of the disputed domain name.
The disputed domain name resolves to a website with PPC links offering services competing with the Complainant.
The disputed domain name was registered and is being used in bad faith.
The disputed domain name was registered after the Complainant started using its own domain name <bodyguardz.com> and is a misspelling designed to capture typographical errors by consumers seeking the Complainant’s website.
The Respondent registered the disputed domain name to disrupt the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has rights in the mark BODYGUARDZ by virtue of its registered trade mark for that term.
The disputed domain name is confusingly similar to the trade mark as it is an obvious misspelling thereof, simply switching the “u” and “a”. The overall impression remains the same. The domain name suffix can be disregarded for the purpose of the comparison.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) explains the consensus view concerning the burden of proof regarding lack of rights or legitimate interests in UDRP cases:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
As to paragraph 4(c)(i) of the Policy, the Panel has concluded (see below) that the disputed domain name has been used for a parking page with links to goods which compete with those supplied by the Complainant. Such use of the disputed domain name could not of itself confer rights or legitimate interests. See paragraph 2.6 of WIPO Overview 2.0, which states:
“Panels have generally recognized that use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a ‘bona fide offering of goods or services’ … especially where resulting in a connection to goods or services competitive with those of the rights holder. As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value (a result that PPC page operators can achieve by suppressing PPC advertising related to the trademark value of the word or phrase). By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion.”
In this case, the advertising links are clearly related to the trade mark value of the invented word “Bodyguardz”.
Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The disputed domain name was registered a year or so after the Complainant started trading and is an obvious “typo-squatting” variation of the Complainant’s distinctive trade mark.
The Respondent has not appeared in this proceeding to deny the Complainant’s allegations including the Complainant’s claim that the Respondent has used the disputed domain name for a parking page with links relating to the Complainant’s activity. The Complainant has not exhibited a screenshot of the page. However, paragraph 4.5 of WIPO Overview 2.0 expresses the consensus view that UDRP panels may undertake limited factual research into matters of public record including visiting the website linked to the disputed domain name. The Panel has done so and can confirm that the disputed domain name is indeed being used for such a website, including links for screen protectors and iPhone covers.
The Panel concludes from the foregoing that the Respondent has registered and used the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.
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, <bodygaurdz.com>, be transferred to the Complainant.
Date: July 26, 2016