WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Payless Shoesource Worldwide, Inc. v. Hakan Soylet
Case No. D2018-1136
1. The Parties
The Complainant is Payless Shoesource Worldwide, Inc. of Topeka, Kansas, United States of America ("United States"), represented by Wiley Rein LLP, United States.
The Respondent is Hakan Soylet of Istanbul, Turkey.
2. The Domain Name and Registrar
The disputed domain name <payless-shoes.com> (the "Domain Name") 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 May 21, 2018. On May 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 22, 2018, 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 May 25, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 14, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 15, 2018.
The Center appointed Ian Lowe as the sole panelist in this matter on June 22, 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
The Complainant is a very substantial retailer of specialist family footwear founded in 1956 in Kansas, United States, providing budget-conscious consumers with fashionable and essential shoes and accessories at affordable prices. It serves millions of consumers, operating over 3,600 stores in more than 40 countries, as well as 300 franchised stores in the Middle East, Asia and Africa.
The Complainant has almost 650 active trademark registrations comprising PAYLESS in 125 jurisdictions around the world, including United States registration number 1949546 PAYLESS registered on January 16, 1996, European Union trademark number 186163 PAYLESS SHOESOURCE and design registered on October 20, 1998 and Turkey trademark number 2009 70083 PAYLESS SHOESOURCE registered on February 15, 2011.
The Domain Name was registered on January 9, 2009. It resolves to a parking page comprising links to webpages of pay-per-click links to third party websites selling shoes and clothing.
5. Parties' Contentions
The Complainant contends that the Domain Name is confusingly similar to its PAYLESS and PAYLESS SHOESOURCE trademarks (the "Marks"), that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
For this Complaint to succeed in relation to the Domain Name the Complainant must prove that:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has uncontested rights in the Marks, both by virtue of its numerous trademark registrations around the world and as a result of the goodwill and reputation acquired through its use of the Marks over very many years since it began using the Marks for retail shoe store services in April 1978. Ignoring the generic Top-Level Domain ("gTLD") ".com", the Domain Name comprises the entirety of the PAYLESS mark together with the generic word "shoes" and comprises the substantial part of the mark PAYLESS SHOESOURCE. In the view of the Panel, these differences do not detract from the confusing similarity between the Domain Name and the Marks. Accordingly, the Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has made out a strong prima facie case that the Respondent could have no rights or legitimate interests in respect of the Domain Name. The Respondent has used the Domain Name not in connection with a bona fide offering of goods or services, but for a website featuring pay-per-click links to third party websites offering goods similar to those sold by the Complainant. There is no suggestion that the Respondent has ever been known by the Domain Name. The Respondent has chosen not to respond to the Complaint or to take any steps to counter the prima facie case established by the Complainant. In the circumstances, the Panel finds that the Respondent does not have any rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
Since the dominant element of the Domain Name comprises the trademark PAYLESS, and in light of the notoriety of the Complainant and its PAYLESS mark and the Complainant's dealings in shoes, the Panel considers it most likely that the Respondent had the Complainant and its rights in the Marks in mind when it registered the Domain Name. The Respondent has used the Domain Name for pay-per-click links to third party websites. In the Panel's view, the legitimate inference is that the Respondent undertook such activity with a view to commercial gain, intending to attract Internet users to the webpage to which the Domain name resolves by creating a likelihood of confusion with the Marks and as to the affiliation or endorsement of that webpage. Accordingly, the Panel considers that this amounts to paradigm bad faith registration and use for the purposes 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 <payless-shoes.com> be transferred to the Complainant.
Date: July 3, 2018