WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Seafolly Pty Limited of Seafolly and Seafolly IP Co. Pty Ltd v. Congj Buxar
Case No. D2018-1007
1. The Parties
Complainants are Seafolly Pty Limited of Seafolly of Alexandria, New South Wales, Australia (the "First Complainant") and Seafolly IP Co. Pty Ltd of Alexandria, New South Wales, Australia, (the "Second Complainant"), both represented by K & L Gates LLP, Australia.
Respondent is Congj Buxar of Clemmons, North Carolina, United States of America ("United States").
2. The Domain Name and Registrar
The disputed domain name <seafollyoutlet.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
Complaint was filed with WIPO Arbitration and Mediation Center (the "Center") on May 8, 2018.
On May 8, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 8, 2018, 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 the Respondent of the Complaint, and the proceedings commenced on May 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 5, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 6, 2018.
The Center appointed Eva Fiammenghi as the sole panelist in this matter on June 21, 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. Factual Background
Complainants are a highly successful designer, manufacturer, wholesaler, and retailer of swimwear and related accessories by reference to the SEAFOLLY trademark.
Since 1977, the Second Complainant has granted an exclusive license to the First Complainant to use the SEAFOLLY Trademark. Any use of the SEAFOLLY trademark by the First Complainant has been under this license.
The Second Complainant, formerly known as P & Y Halas Pty Limited, is the owner of several trademark registrations for SEAFOLLY since 2006, which have been registered in numerous countries all over the world, while the First Complainant owns the domain names <seafolly.com> and <seafolly.com.au>. The First Complainant registered the Australian trademark SEAFOLLY, No. 1086227, on July 13, 2006.
The dispute domain name was registered on August 11, 2017 and resolves to a website which sells swimwear and related accessories by reference to the SEAFOLLY trademark, and other competing products.
5. Parties' Contentions
Complainants argue that the disputed domain name is confusingly similar to its SEAFOLLY trademark as it includes the trademark SEAFOLLY and the term "outlet". The addition to the word "outlet" to the trademark in the disputed domain name does not remove any confusion.
Respondent is not affiliated with Complainants and there is no evidence to suggest that Respondent has registered the disputed domain name to advance legitimate interests.
Complainants have never licensed or otherwise permitted Respondent to use its trademark or to register any domain name including its trademark.
Complainants request that the disputed domain name be transferred to them.
Respondent did not reply to Complainants' contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainants must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainants have rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
A. Identical or Confusingly Similar
In the present case, the disputed domain name incorporates the term "seafolly", which is identical to Complainant's registered trademark SEAFOLLY.
It is clear that the disputed domain name incorporates in its entirety the SEAFOLLY trademark to which the descriptive term "outlet" has been added.
It is well-established that the addition of a descriptive or generic word to a trademark in a domain name, particularly when such additional words relate to the goods or services with which the mark is used, does not avoid confusing similarity. See e.g., eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307.
The Panel retain that the term "outlet" is related to Complainants' core business. Thus, the public is likely to believe that the disputed domain name <seafollyoutlet.com> is related to a website from which Complainants' branded products can be purchased. The Panel finds that the addition of the descriptive word "outlet" does not serve to sufficiently distinguish or differentiate the disputed domain name from Complainants' SEAFOLLY trademark.
Moreover, is well established that the generic Top-Level Domains ("gTLD") ".com", being a necessary component of a domain name, may be disregarded for the purpose of comparison under this ground. Herein after in evidence a number of previous UDRP decisions, including cases specifically involving Complainants' trademark. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Panel finds the first element of the Policy has, therefore, been met.
B. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), Complainants have to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent is not in any way affiliated with Complainants, nor have Complainants authorized or licensed Respondent to use their trademark, or to seek registration of any domain name incorporating said trademark.
Complainants have presented a prima facie case and argued that Respondent has not provided any evidence demonstrating that Respondent might be commonly known by the disputed domain name, or that Respondent has any registered trademarks or trade names corresponding to the disputed domain name. The Panel finds that Respondent cannot claim that it is unaware of Complainants' trademarks, as it makes reference to the SEAFOLLY Trademark without disclaimer disclosing the relationship between Complainants and Respondent on the website, at the disputed domain name, for a commercial purpose, which is not bona fide use.
The Panel concludes that Respondent lacks any rights or legitimate interests in the disputed domain name.
The Panel finds the second element of the Policy has, therefore, been met.
C. Registered and Used in Bad Faith
Respondent, by using the disputed domain name, is intentionally misleading the consumers and confusing them trying to attract them to other websites making them believe that the websites behind this link is associated or recommended by Complainants.
The disputed domain name resolves to a website which purpose is selling swimwear and related accessories by reference to the SEAFOLLY trademark, without the consent of Complainants.
Then the disputed domain name is only used to divert Internet users to another site selling swimwear and related accessories under or by reference to the SEAFOLLY trademark, and other competing products.
On the basis of the above, the Panel finds that Respondent registered the disputed domain name to attract Internet users, for commercial gain, by creating a likelihood of confusion with Complainants' trademarks and domain names (Policy, paragraph 4(b)(iv)).
Accordingly, pursuant to paragraph 4(b) of the Policy, this Panel finds that disputed domain name was registered and has been used in bad faith by the Respondent.
On this basis the Panel finds that Complainants have satisfied the third and last point of the Policy, paragraph 4a(iii).
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 <seafollyoutlet.com> be transferred to the First Complainant Seafolly Pty Limited.
Date: June 28, 2018