WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
All Saints Retail Limited v. Name Redacted
Case No. D2017-2492
1. The Parties
The Complainant is All Saints Retail Limited of London, United Kingdom of Great Britain and Northern Ireland (“UK” or “United Kingdom”), represented by Safenames Ltd., United Kingdom.
The Respondent is Name Redacted.1
2. The Domain Name and Registrar
The disputed domain name <allsaintsoutlet.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 19, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s 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 December 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 17, 2018. The Center received email communications from a person named as the Respondent (but using an email address different to the email address of the registrant of the disputed domain name) on January 3, 2018, and January 9, 2018. The Respondent did not submit any response.
On January 15, 2018, the Complainant filed a Supplemental Filing with the Center.
The Center appointed George R. F. Souter as the sole panelist in this matter on January 29, 2018. 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. Preliminary Issue: Complainant’s Supplemental Filing
The Rules provide for the submission of a complaint by the complainant and a response by the respondent, with no express provision for the submission of any additional unsolicited filings by either party, except in response to a deficiency notification or if requested by the Center or the Panel. Paragraphs 10 and 12 of the Rules in effect grant the Panel discretion to determine the admissibility of supplemental filings received from either party.
In its Supplemental Filing of January 15, 2018, the Complainant reiterates a point initially raised in the Complaint regarding the identity of the Respondent and requests that the name of the Respondent be redacted from the administrative proceeding in light of the emails of January 3, 2018, and January 9, 2018, received from the person named as the Respondent (but using an email address different to the email address of the registrant of the disputed domain name). In sum, the Complainant “demands, at the Panel’s discretion, that [the Respondent’s name] be redacted”.
The Panel, upon review of the entirety of the facts and submissions before it, has determined independently that name redaction would be warranted under the circumstances, and thus finds it unnecessary to determine the admissibility of the Complainant’s Supplemental Filing.
5. Factual Background
The Complainant is a fashion retailer founded in 1994. The Complainant’s business covers retail and wholesale store selling of articles of clothing, footwear and headgear, men’s clothing, women’s and men’s bags, and perfumes under its ALL SAINTS trademark. It operates over 249 stores spread over 90 cities. The Complainant employs over 3,000 employees in 27 countries including in the United Kingdom, France, United States of America (“US”), Canada, Republic of Korea and Japan, and its turnover in 2016 was over GBP 250 million.
Details of extensive protection of its ALL SAINTS trademark, including UK trademark registration No. 00002307473, dating from 2003, US registration No. 3580525, dating from 2009, and European Union registration No. 004610945, dating from 2009, have been supplied to the Panel.
The disputed domain name was registered on October 15, 2017, and resolves to a website offering discounted clothing under the ALL SAINTS trademark.
6. Parties’ Contentions
The Complainant alleges that the disputed domain name is confusingly similar to its ALL SAINTS trademark, including the ALL SAINTS trademark in its entirety with the mere addition of a descriptive or non-distinctive element in the form of the word “outlet”.
The Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed domain name, in particular that, to the best of the Complainant’s knowledge, the Respondent has not registered any trademark for the term “all saints” and therefore, does not hold rights to the disputed domain name <allsaintsoutlet.com>. The Complainant states that it has never granted permission to the Respondent to use its ALL SAINTS trademark in commerce.
The Complainant alleges that the disputed domain name was registered in bad faith, and is being used in bad faith in connection with a website offering “alleged” ALL SAINTS products at very low prices.
The Respondent did not reply to the Complainant’s contentions.
7. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is well-established in prior decisions under the UDRP that generic Top-Level Domain (“gTLD”) indicators (e.g., “.com”, “.org”, and “.net”) may be considered irrelevant in assessing confusing similarity between a trademark and a disputed domain name. The Panel agrees with this view, and considers the “.com” gTLD indicator to be irrelevant in the present case.
The word “outlet” is in common use in connection with retail sales, and, in the circumstances of the present case, can only be regarded as a non-distinctive element added to the Complainant’s trademark in the disputed domain name. It is well-established in prior decisions under the Policy that the mere addition of a descriptive or non-distinctive element to a complainant’s trademark is insufficient to avoid a finding of confusing similarity between a complainant’s trademark and a disputed domain name, and the Panel so finds in the present case.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
It is the consensus view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy.
The Panel regards the submissions put forward by the Complainants as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case.
Accordingly, the Panel finds that the Complainants have satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name can lead, in appropriate circumstances, to a finding of registration of a disputed domain name in bad faith. In the circumstance of the present case, in which the Panel believes that the Respondent has clearly had the Complainant’s trademark in mind when constructing the disputed domain name, the Panel regards it as appropriate to find that the disputed domain name was registered in bad faith, and so finds.
In connection with use of a disputed domain name in bad faith, it is well-established in prior decisions under the Policy that the use of a disputed domain name in connection with a website offering goods traded in by a trademark holder which do not emanate from the trademark holder constitutes use in bad faith. The Panel considers, in the circumstances of the present case, that the goods offered in the website operated under the disputed domain name under the Complainant’s trademark are almost certainly not the genuine goods of the Complainant, as they are offered for sale at well below the price of genuine goods, and that the Respondent has intentionally attempted to attract Internet users to its website for commercial gain. Even if the goods are genuine, the Respondent may not use a domain name confusingly similar to the Complainant’s trademark to sell the Complainant’s goods at a steep discount. This, in the opinion of the Panel, is sufficient to support a finding of use in bad faith, and the Panel so finds.
Accordingly, the Panel finds that the Complainants have satisfied the dual requirements of 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 <allsaintsoutlet.com> be transferred to the Complainant.
George R. F. Souter
Date: February 12, 2018
1 The Respondent appears to have used the name of a third party in the registration of the disputed domain name. In light of this potential identity theft, the Panel has redacted the Respondent’s name from the caption and body of this Decision. Attached as Annex 1 to this Decision is the Panel’s instruction to the Registrar regarding transfer of the disputed domain name, including the Respondent’s name. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, but has indicated that Annex 1 to this Decision shall not be published due to the circumstances of this case.