WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Solstice Marketing Corporation v. Solsticesunglasses-Discount-Shop-Sale.com
Case No. D2017-1919
1. The Parties
The Complainant is Solstice Marketing Corporation of Secaucus, New Jersey, United States of America ("USA"), represented by Schnader, Harrison, Segal & Lewis, LLP, USA.
The Respondent is Solsticesunglasses-Discount-Shop-Sale.com of Moscow, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <solsticesunglasses-discount-shop-sale.com> (the "Domain Name") is registered with Shinjiru MSC Sdn Bhd (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 29, 2017. On October 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 3, 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 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 October 6, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 26, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 27, 2017.
The Center appointed Dawn Osborne as the sole panelist in this matter on November 8, 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
The Complainant owns the trade marks SOLSTICE registered on November 14, 2000 under No. 2404845 and SOLSTICE SUNGLASS BOUTIQUE registered on March 18, 2006 under No. 3396949, both for retail store services relating to sunglasses with first use in commerce of SOLSTICE recorded as November 5, 1999.
The Domain Name was registered on December 24, 2016 and has been used to sell sunglasses not connected with the Complainant through the site attached to the Domain Name, which uses a logo very similar and nearly identical to the Complainant's logo.
5. Parties' Contentions
The Complainant's contentions can be summarised as follows:
The Domain Name is confusingly similar to the Complainant's registered trade mark SOLSTICE with first use in commerce being November 5, 1999 and its registered trade mark SOLSTICE SUNGLASS BOUTIQUE with first use in commerce being 2004 both registered in the USA for retail store services relating to sunglasses. The Domain Name incorporates the trade mark SOLSTICE entirely and the dominant part of SOLSTICE SUNGLASS BOUTIQUE and the generic terms "sunglasses", "discount", "sale" and "shop". Through an affiliate, the Complainant also owns the domain name <solsticesunglasses.com> since 2010.
The Domain Name was registered on December 24, 2016, over seventeen years after the Complainant registered its SOLSTICE mark and six years after the Complainant started using the <solsticsunglasses.com> domain name. The Respondent is not commonly known by the Domain Name. The Respondent's sale of sunglasses under the Domain Name is not bona fide use, but is in fact infringing unauthorised use. It is not noncommercial or fair use.
The Respondent registered the Domain Name in bad faith to attract Internet users to its website by creating a likelihood of confusion with the Complainant's trade marks for commercial gain. The Respondent has copied the font and style of the name "Solstice Sunglasses" from the Complainant's site to the site attached to the Domain Name and so is using a logo very similar to the Complainant's without permission.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Identical and/or Confusingly Similar
The Domain Name in this Complaint combines the Complainant's SOLSTICE mark (registered in the USA for retail services related to sunglasses with first use recorded as 1999), the generic terms "sunglasses", "discount", "sale" and "shop", some hyphens and the generic Top-Level Domain ("gTLD") ".com".
The addition of the above mentioned terms does not serve to distinguish the Domain Name from the Complainant's SOLSTICE mark which is still identifiable within the Domain Name.
The gTLD ".com" does not serve to distinguish the Domain Name from the Complainant's SOLSTICE mark being a functional element of a domain name.
Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark in which the Complainant has rights for the purpose of the Policy. There is, therefore no need to consider the additional SOLSTICE SUNGLASS BOUTIQUE mark owned by the Complainant.
Rights or Legitimate Interests
The Respondent does not appear to be commonly known by the Domain Name and the Domain Name itself has been used incorrectly as the registrant name on the WhoIs details. The Complainant has not authorised the Respondent to use the Complainant's SOLSTICE mark. The use of the Domain Name is commercial and so cannot be legitimate noncommercial use.
Previous UDRP Panels have found that a respondent is not using a disputed domain name for a bona fide offering of goods or services if it uses the domain name to divert Internet users to a website competing with the complainant under the complainant's mark. It is clear from the evidence that the Respondent has used the site attached to the Domain Name for a competing retail site selling sunglasses which is not connected with the Complainant.
The Respondent has not answered this Complaint and has not provided any legitimate reason why it should be able to use the Complainant's trade marks in this way. As such the Panel finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The Respondent's use of the site attached to the Domain Name is commercial and it is using the site to make profit from competing services not associated with the Complainant in a confusing manner.
The use of a logo in the masthead of the Respondent's site attached to the Domain Name which is very similar to the Complainant's official logo is passing off. The usage of the Complainant's SOLSTICE mark in relation to competing retail services not connected with the Complainant in the form of a sign highly similar to the Complainant's official logo on the website attached to the Domain Name is a misrepresentation and because of the use of this highly similar logo and the Complainant's SOLSTICE mark in the Domain Name and on the site attached to the Domain Name, the Respondent's site is highly likely to be confused for a site belonging to or connected with the Complainant and its services.
The specific combination of the Complainant's mark and the product it sells in the Domain Name and the use of a sign highly similar to the Complainant's logo on the web site attached to the Domain Name indicates the Respondent was aware of the Complainant's rights at the time of registration and throughout use.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site under paragraph 4(b)(iv) of the Policy. This is also clearly designed to disrupt the business of a competitor and constitutes bad faith under paragraph 4(b)(iii) of the Policy.
As such, the Panel believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith under paragraphs 4(b)(iii) and (iv) and has satisfied the third limb 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 Domain Name, <solsticesunglasses-discount-shop-sale.com>, be transferred to the Complainant.
Date: November 21, 2017