WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Edgewell Personal Care Brands, LLC v. Joshua Eisenhower
Case No. D2017-0314
1. The Parties
Complainant is Edgewell Personal Care Brands, LLC of Shelton, Connecticut, United States of America (“United States” or “U.S.”), represented by Thompson Coburn LLP, United States.
Respondent is Joshua Eisenhower of Elizabethtown, Pennsylvania, United States.
2. The Domain Name and Registrar
The disputed domain name <stayfree.xyz> is registered with Uniregistrar Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2017. On February 16, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 16, 2017, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on February 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 19, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 20, 2017.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on March 23, 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 personal care and feminine care products, and has used the STAYFREE mark since 1969 for, among other things, feminine sanitary products, pads, and napkins. Complainant owns trademark registrations for the STAYFREE mark in jurisdictions around the world, including in the United States, where Respondent lists his address of record. These include U.S. Registration No. 1082180 (registered in 1978) and U.S. Registration No. 2224229 (registered in 1999). Complainant also owns the registration for the domain name <stayfree.com>, which it uses to inform consumers and potential consumers about its products.
The disputed domain name <stayfree.xyz> was registered on November 27, 2016. Respondent uses the disputed domain name to resolve to a website that contains links to goods that compete with those offered by Complainant. Respondent has no affiliation with Complainant, nor any license to use its marks.
5. Parties’ Contentions
Complainant contends that (i) <stayfree.xyz> 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 STAYFREE mark. Complainant contends that Respondent has incorporated this mark in the disputed domain name in full. Complainant contends that Respondent lacks rights or legitimate interest 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 good will 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 <stayfree.xyz> 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, STAYFREE, and merely adds the generic Top-Level Domain, “.xyz”. The Panel thus finds that consumers will thus likely assume that <stayfree.xyz> 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 interest” as must be proven to succeed in a UDRP dispute. Paragraph 4(c) of the Policy gives examples that demonstrate 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.
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 a website at the disputed domain name to link to goods that 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 notes that Complainant has alleged that Respondent has evidenced bad faith also in having 1) engaged in a pattern of conduct that shows bad faith in accordance with paragraph 4(b)(ii) of the Policy; and 2) “registered or acquired the domain name primarily for the purpose of selling for valuable consideration in excess of documented out-of-pocket costs,” in a showing of bad faith as contemplated by paragraph 4(b)(i) of the Policy. The Panel notes, however, that Complainant’s arguments are not supported by the evidence and cited cases. Complainant cites to one other potentially infringing domain name that it knows of which was owned (and transferred voluntarily) by Respondent, whereas the case Complainant cites refers to a pattern established “with some 40 UDRP cases against” Respondent. See AT&T v. Asia Ventures, Inc., WIPO Case No. D2005-1012 (transferring <attathome.com> and <atttelephones.com>). It is instructive to look at the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.3, which states the following consensus view:
A pattern of conduct can involve multiple UDRP cases with similar fact situations or a single case where the respondent has registered multiple domain names which are similar to trademarks. However the registration of two domain names in the same case is generally not sufficient to show a pattern, nor is a single prior example of apparent bad faith domain name registration. Although panels will generally look to the specific circumstances, a pattern normally requires more than one relevant example.
Similarly, Complainant here points to an offer to sell the disputed domain name for USD 299, which, without more, the Panel is not prepared to find “in excess of documented out-of-pocket costs”. By contrast, the case cited by Complainant refers to an offer to sell for USD 75,000. See Ticketmaster Corp. v. Spider Web Design, Inc., WIPO Case No. D2000-1551 (transferring <ticketmaster.org>).
In summary, and based on its finding regarding Respondent’s commercial use of the disputed domain name, the Panel finds that Respondent registered and used 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, <stayfree.xyz>, be transferred to Complainant.
Date: April 6, 2017