The Complainant is Dekker Olifanta B.V. of Warmond, the Netherlands, represented by Deloitte Legal B.V., the Netherlands.
The Respondent is Linh Conrad of Harrisburg, Pennsylvania, United States of America.
The disputed domain name <protest-sportswear.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 31, 2017. On July 31, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 1, 2017, 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 Complainant filed an amendment to the Complaint on August 4, 2017.
The Center verified that the Complaint together with the amendment to 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 with its amendment, and the proceedings commenced on August 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 24, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 30, 2017.
The Center appointed Gonçalo M. C. Da Cunha Ferreira as the sole panelist in this matter on August 30, 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.
The Complainant is Dekker Olifanta B.V, the owner of several registrations for the trademark PROTEST, for products and services in classes 9, 14, 16, 18, 25, 28 and 35.
The Complainant is a design-led sportswear company, founded in the Netherlands in 1993. Its main focus is designing and commercializing clothing for men, women and children.
The corporate website of the Complainant is "www.protest.eu". The title of Complainant's website displays the words "Protest Sportswear" next to the favicon with the PROTEST logo. "Protest Sportswear" is a combination of the trademark PROTEST and the dictionary term "sportswear".
The trademark PROTEST is strongly associated with the dictionary term "sportswear", namely on social networks, through a Facebook page, registered as "Protest Sportswear" with approximately 106,000 followers, and on Instagram being registered as "@protestsportswear".
The disputed domain name is <protest-sportswear.com>, registered on March 24, 2017.
The disputed domain name directs to a website (the "Website") that displays the word "protest", identical to the trademark PROTEST. This website favicon is different from the one at the Complainant's website, but uses the same website title "Protest Sportswear" and adds "Protest London, Protest Clothing and Shoes – Men's & Women's | All ordersfree UK Delivery". The Website offers Complainant's products for sale, mainly clothing.
The Complainant contends that the three requirements of paragraph 4(a) of the Policy are met:
1. The disputed domain name is identical and confusingly similar to the trademark PROTEST in which the Complainant has rights. The Complainant alleges that both the disputed domain name and the website linked to this domain name use the term "protest", identical to the trademark PROTEST that belongs to it, registered and used for products and services in several classes, including class 18 and 25. Additionally, the website linked to the disputed domain name offers for sale clothes and bags of the brand PROTEST, which belongs to the Complainant.
2. The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant argues that the disputed domain name comprises the term "protest" identical to the trademark PROTEST that belongs to the Complainant. It alleges the Respondent has not been granted permission to offer and sell the Complainant's products and that the Respondent is not an authorized distributor of the Complainant's products. Therefore, it alleges that there is no bona fide use of the of the disputed domain name, once it is linked to a website that offers for sale the Complainant's products, which clearly indicates the Respondent has no legitimate interests in the disputed domain name.
3. The Respondent has registered and is using the disputed domain name <protest-sportswear.com> in bad faith. The Complainant alleges that the Respondent uses the trademark PROTEST in its domain name to intentionally divert and mislead Internet users to its Website which clearly indicates bad faith. Not only was it registered in bad faith, but the Complainant argues that the disputed domain name is also used in bad faith, because the Respondent seeks to ride on the coattails of the trademark PROTEST and its reputation, clearly intending to mislead Internet users which already resulted in complaints from the Complainant's customers. The Complainant also expects that the Respondent's contact details are a cover-up or stolen. When the Complainant contacted the hosting party reporting the abuse of its trademarks the Website was transferred to a new server location/IP address with a new hosting party, two facts that strongly indicate bad faith.
The Respondent did not reply to the Complainant's contentions.
In order to obtain the transfer of a domain name, a complainant must prove the three Policy elements, regardless of whether a respondent files a response to the complaint.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
The Complainant has proved to have prior rights on the trademark PROTEST. The trademark PROTEST is registered and used for products and services in several classes, including class 8, 18 and 25.
The Panel notes that the trademark PROTEST is predominantly intended for sportswear, and that the Complainant is also recognized by the sign "Protest Sportswear" that results from the combination of the trademark PROTEST and the dictionary term "sportswear", specifically on the Complainants official website and social networks such as Facebook and Instagram.
The disputed domain name comprises in its entirety the trademark PROTEST, in which the Complainant has prior rights, and also comprises the dictionary term "sportswear", strongly associated with the trademark PROTEST. Thus, the Panel considers that the disputed domain name is identical and confusingly similar to the PROTEST trademark. See Section 1.8 of the WIPO Overview 3.0.
Also consistent with previous UDRP decisions, the addition of the generic Top-Level Domain ("gTLD") ".com", should be disregarded in order to distinguish a disputed domain name from a complainant's mark.
In light of the above, the Panel finds that the first element of the Policy has been satisfied.
The Complainant has prior rights in the trademark PROTEST, the dominant component of the disputed domain name and the Panel finds that the Complainant has given the Respondent no right to use the trademark PROTEST.
The Panel also accepts that the Complainant has granted no permission to offer and sell the Complainant's products or to distribute its products. The Respondent is using the disputed domain name to offer for sale products identical to the Complainant's without disclosing the relationship between the Complainant and the Respondent, which clearly indicates illegitimate use of the disputed domain name.
The Respondent has not presented any relevant proof, evidence or argument that could lead this Panel to conclude that the Respondent could have any rights or legitimate interests in respect of the disputed domain name.
Therefore, the Panel finds that the second element of the Policy has been satisfied.
The disputed domain name <protest-sportswear.com> comprises the trademark PROTEST, in which the Complainant demonstrated to have prior rights.
The recent registration of the disputed domain name comprising a prior registered trademark and a dictionary term to which this trademark is closely linked and by which it is recognized, is in the view of this Panel an indication of bad faith. Furthermore, the fact that the disputed domain name is linked to a website that offers for sale what seems to be the Complainant's products reveals that the Respondent was aware of the Complainant's trademark rights and its activity at the time the disputed domain name was registered. This leaves no doubt concerning a finding of bad faith registration.
Linking the disputed domain name to a website mimicking the Complainant's official website, using Complainant's trademark and offering for sale what seems to be the Complainant's products results in this Panel's finding that the disputed domain name is clearly used in bad faith and demonstrates an intentional attempt to attract Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's trademark as described under paragraph 4(b)(iv) of the Policy. See, amongst others Balenciaga v. liu zhixian, zhixian liu, WIPO Case No. D2010-1831.
For the foregoing reasons, this Panel finds that the Complainant has proven the third and final element 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 <protest-sportswear.com> be transferred to the Complainant.
Gonçalo M. C. Da Cunha Ferreira
Sole Panelist
Date: September 13, 2017