WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sneaker Villa, Inc. d/b/a/ Villa Join The Movement v. Perfect Privacy, LLC / Charles Osorio, Sneakersvilla
Case No. D2016-2651
1. The Parties
Complainant is Sneaker Villa, Inc. d/b/a/ Villa Join The Movement of Philadelphia, Pennsylvania, United States of America, represented by Tucker & Latifi, LLP, United States of America.
Respondent is Perfect Privacy, LLC of Jacksonville, Florida, United States of America / Charles Osorio, Sneakersvilla of Las Vegas, Nevada, United States of America.
2. The Domain Name and Registrar
The disputed domain name <sneakersvilla.com> is registered with Register.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 30, 2016. On January 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 3, 2017, the Registrar transmitted by email to the Center its verification 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 Complainant on January 6, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 9, 2017.
The Center verified that the Complaint 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 Respondent of the Complaint, and the proceedings commenced on January 11, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 31, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 6, 2017.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on February 13, 2017. 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
Complainant provides retail services and goods including foot wear, sporting goods, jewelry, watches, and bags. Complainant has provided these goods and services since 1989. Complainant owns trademark registrations for the mark SNEAKER VILLA in the United States where Respondent lists its address of record. These include U.S. Registration No. 4,392,327 (Registered on August 27, 2013) and U.S. Registration No. 4,712,920 (Registered on March 31, 2015).
The disputed domain name <sneakersvilla.com> was registered on August 4, 2013. Respondent uses the disputed domain name to offer products and services that compete with those of Complainant. Respondent has no affiliation with Complainant, nor any license to use its marks.
5. Parties’ Contentions
Complainant contends that (i) <sneakersvilla.com> is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.
Specifically, Complainant contends that it is the owner of the SNEAKER VILLA mark. Complainant contends that Respondent has incorporated this mark in the disputed domain name in full. Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name, and rather has registered and is using it in bad faith, by offering a commercial website that trades on the goodwill of Complainant’s trademarks.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
This Panel must first determine whether <sneakersvilla.com> is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name incorporates in full Complainant’s registered mark, SNEAKER VILLA, merely making plural the term “sneaker(s).” The Panel thus finds that consumers will likely assume that “sneakersvilla.com” refers to a website providing goods and/or services endorsed by or associated with Complainant.
The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph (4)(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel next considers whether Complainant has shown that Respondent has no rights or legitimate interests as must be proven to succeed in a UDRP dispute.
Paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that respondent has been “commonly known by the domain name”; or (iii) “legitimate noncommercial 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”.
No evidence has been presented to this Panel that might support a claim of Respondent’s rights or legitimate interests in the disputed domain name, and Respondent has no license from, or other affiliation with, Complainant. Rather, Respondent uses a domain name nearly identical to Complainant’s mark to offer for sale goods that compete with Complainant. Such use cannot be considered a bona fide offering of goods under the Policy.
Therefore, this Panel finds that Complainant has provided sufficient evidence of Respondent’s lack of rights or legitimate interests in accordance with paragraph 4(a)(ii) of the Policy which Respondent has not rebutted.
C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that domain names were registered and used in bad faith. For example, paragraph (4)(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] web site or location”. As noted in Section 4 of this Panel’s decision, Respondent is using the disputed domain name to offer retail services and goods that appear to compete with those offered by Complainant. Respondent is thus trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain. This evidences bad faith by Respondent.
The Panel finds that Respondent’s choosing of a nearly identical domain name (while it predates Complainant’s trademark registration by a few weeks) is no coincidence, and the subsequent use described above is telling of Respondent’s intent to target the Complainant’s mark.
Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith in accordance with 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, <sneakersvilla.com>, be transferred to Complainant.
Date: February 27, 2017