WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
STYLIGHT GMBH v. WhoisGuard Protected, WhoisGuard, Inc. / William Moore
Case No. D2017-2163
1. The Parties
The Complainant is STYLIGHT GMBH of Munich, Germany, represented by BPM Legal, Germany.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama / William Moore of Viejo, California, United States of America ("USA").
2. The Domain Name and Registrar
The disputed domain name <stylight.pro> is registered with NameCheap, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 5, 2017. On November 6, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 6, 2017, 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 November 9, 2017 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 November 15, 2017.
The Center verified that the Complaint together with the 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 November 16, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 6, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 7, 2017.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on December 12, 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 factual background about the Complainant is taken from the Complaint.
The Complainant operates websites offering a wide variety of goods including clothing, accessories, shoes and household items, mostly sourced through other online locations. The Complainant currently has an online presence in numerous countries worldwide, including Australia, Belgium, Brazil, Canada, Germany, Spain, France, Ireland, Italy, Mexico, the Netherlands, Norway, Austria, Switzerland, Sweden, the United Kingdom of Great Britain and Northern Ireland and the USA.
The Complaint owns several trademarks for STYLIGHT including:
STYLIGHT, European Union Trademark, registered on June 16, 2009, registration number 007416051, classes 25, 33, 38, 42;
STYLIGHT, International Trademark, registered on May 14, 2009, registration number 1011334, classes 25, 33, 38, 42;
STYLIGHT, United States Patent and Trademark Office, principal register, registered on January 25, 2011, registration number 3910299, classes 25, 33, 38, 42.
The Complainant has an online presence through the website "www.stylight.com" and a number of country-specific websites including "www.stylight.com.au", "www.stylight.be", "www.stylight.com.br", "www.stylight.ca", "www.stylight.de", "www.stylight.es", "www.stylight.fr", "www.stylight.ie", "www.stylight.it", "www.stylight.com.mx", "www.stylight.nl", "www.stylight.no", "www.stylight.at", "www.stylight.ch", "www.stylight.se" and "www.stylight.co.uk". The Complainant also owns the domain names <mystylight.at>, <mystylight.de>, <mystylight.net>, <mystylight.org>, <stylight.com.pt>, <stylight.com.vn>, <stylight.fi>, <stylight.com.hk>, <stylight.co.za>, <stylight.com.ar>, <stylight.com.mx>, <stylight.cz>, <stylight.events>, <stylight.gr>, <stylight.hu>, <stylight.jp>, <stylight.kr>, <stylight.my>, <stylight.pl>, <stylight.ru>, <stylight.uk>, <stylight.biz>, <stylight.co.in>, <stylight.co.za>, <stylight.com.ar>, <stylight.eu>, <stylight.info>, <stylight.company>, <stylight.fashion> and <stylight.mobi>.
The factual background about the Respondent is taken from the Complaint.
The disputed domain name was registered on April 14, 2017 and is currently blank but has at times reproduced the Complainant's website by means of Internet browser framing technology. The Respondent operates online by selling footwear through a different domain name from the disputed domain name.
5. Parties' Contentions
The Complainant contends that it has rights in the trademarks listed in section 4 above and has produced copies of the relevant registration records available online.
The Complainant contends that the disputed domain name is identical or confusingly similar to its trademark, which it says is highly distinctive. A Google search for STYLIGHT produces references only to the Complainant. The generic Top-Level Domain ("gTLD") should be disregarded in the determination of confusing similarity to the trademark.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant states that it has not licensed or otherwise permitted the Respondent to use its trademark or to apply for a domain name incorporating its trademark. The Complainant submits that these assertions constitute a prima facie case that places the burden upon the Respondent to demonstrate any rights or legitimate interests in the disputed domain name.
The Complainant further contends that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant's trademark is an invented word and the Complainant has been in business for nearly seven years with over six million people using its various platforms. It is inconceivable that the Respondent was previously unaware of the Complainant's trademark, particularly as the Respondent's website has displayed the Complainant's website content in frame, which itself constitutes use of the disputed domain name in bad faith.
The Complainant says that the Respondent's registration of the disputed domain name prevents the Complainant from reflecting its trademark in a corresponding domain name. The Respondent's registration and use of a domain name containing a trademark with which it has no connection suggests opportunistic bad faith. The redirection of Internet users to the Complainant's website by the Respondent also constitutes use of the disputed domain name in bad faith. Furthermore the Respondent's holding of the disputed domain name constitutes an abusive threat hanging over the head of the Complainant.
The Complainant has cited a number of previous decisions under the Policy that it considers to support its contentions.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:
"(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith".
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
The Panel is satisfied by the evidence produced that the Complainant has the requisite rights in the trademark STYLIGHT for the purposes of paragraph 4(a)(i) of the Policy.
The disputed domain name is <stylight.pro>. The gTLD designation, in this case ".pro", may generally be disregarded in the determination of confusing similarity. What remains in this instance is "stylight", which is identical to the Complainant's trademark. The Panel finds for the Complainant under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has stated a prima facie case to the effect that the Respondent has no rights or legitimate interests in respect of the disputed domain name and has not been licensed or otherwise permitted to use the Complainant's trademark.
Paragraph 4(c) of the Policy provides that the Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating, without limitation, any of the following circumstances:
"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a 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".
The Respondent has not replied. On the evidence, the Panel cannot perceive of any way in which the Respondent might reasonably satisfy any of the provisions of paragraphs 4(c)(i), (ii) or (iii) of the Policy and accordingly the Panel finds for the Complainant under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered in bad faith and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location".
The provisions of paragraph 4(b) of the Policy are without limitation.
The Complainant has produced a screen capture of the website to which the disputed domain name resolved on August 14, 2017; the page is effectively blank. The Complainant also viewed the source code, however, and found it to comprise instructions to frame the content of the Complainant's website "www.stylight.com". In the exercise of its powers to undertake limited factual research into matters of public record (WIPO Overview 3.0, section 4.8), the Panel visited the URL of the disputed domain name on December 21, 2017 and verified that it had no content but still had the framing source code in place.
The Complainant has produced evidence in the form of a NameCheap WhoIs record showing the registrant of the domain name <kalemfootwears.us> to have the same name, street address, telephone number and email address as those disclosed by the Registrar as being the registrant of the disputed domain name. According to a screen capture produced by the Complainant, the domain name <kalemfootwears.us> on November 15, 2017 resolved to a website headed "Kalem Online Footwear Shop" that advertised men's and women's footwear, with a shopping cart icon and page links such as "shipping and returns" that indicated a commercial selling operation.
Whilst the evidence does not link the use of the domain name <kalemfootwears.us> to the disputed domain name, it is sufficient to indicate that the Respondent, on the balance of probabilities, is the registrant of both of these domain names and is engaged in the business of selling shoes over the Internet. The Respondent is not the Complainant "Stylight", which is an established business selling clothing including shoes over the Internet. Nevertheless the Respondent's source code on the website of the disputed domain name demonstrates knowledge of the Complainant's website "www.stylight.com", and, on the evidence, the Respondent has incorporated the entirety of the Complainant's trademark STYLIGHT into the disputed domain name without any entitlement to do so. The consequence of the Complainant's website being framed on the website set up by the Respondent at the disputed domain name will inevitably be the portrayal of the Complainant's Internet shop front under the guise of the Respondent's Internet presence.
On the evidence, and on the balance of probabilities, the Panel finds that the disputed domain name has been registered and used primarily with intent to attract Internet visitors for commercial gain by confusion with the Complainant's trademark, within the meaning of paragraph 4(b)(iv) of the Policy. Accordingly the Panel finds for the Complainant under 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 <stylight.pro> be transferred to the Complainant.
Clive N.A. Trotman
Date: December 21, 2017