WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dyson Technology Limited v. Antonio Gambacorta and Chad Wright
Case No. D2019-0171
1. The Parties
The Complainant is Dyson Technology Limited of Malmesbury, United Kingdom (“UK”), represented by Craig Macpherson, United Kingdom.
The Respondents are Antonio Gambacorta of Bari, Italy and Chad Wright of Myrtle Creek, Oregon, United States of America.
2. The Domain Names and Registrar
The disputed domain names <airwrapmall.com>, <airwrapmart.com>, <airwrapstylerstore.com>, <airwrapvip.com> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2019. On January 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 24, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 1, 2019 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 February 4, 2019.
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 February 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 25, 2019. The Center received informal email communications from the Respondents on February 5, 2019, February 19, 2019, February 22, 2019, and February 26, 2019. The Respondents did not submit any formal response. Accordingly, the Center notified the Parties that would proceed to panel appointment on February 26, 2019.
The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on March 7, 2019. 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 states that it is part of a group of companies which trades in more than 70 countries and has operated for 25 years. It is primarily engaged in the design, development and sale of domestic and commercial appliances, particularly those involving manipulation of airflow, and includes cyclonic vacuum cleaners, hand dryers, fans and heaters, humidifiers, purifiers, hairdryers, hair stylers and lighting products. Relevant to this proceeding is the Dyson Airwrap Styler. This product was launched on October 9, 2018 and is the Complainant’s second product in the beauty category. Since its release, the Complainant states that the Dyson Airwrap Styler has received a “huge amount of global press coverage” and was the Complainant’s flagship product in the run-up to the 2018 Christmas gifting season.
The Complainant states that it has responsibility within the group for owning its intellectual property rights around the world, including more than 250 trademark registrations for the word mark DYSON, 39 trademarks and trademark applications for the word mark AIRWRAP (e.g., UK00003235857, registered on August 25, 2017), 39 trademarks and trademark applications for the word mark DYSON AIRWRAP and 39 trademarks and trademark applications for the stylized mark “dyson airwrap”. The Panel notes that all trademarks and trademark applications predate the disputed domain names. The Complainant also states that it is the owner of extensive goodwill and reputation in the UK and elsewhere subsisting in these marks.
The disputed domain names <airwrapmart.com> and <airwrapstylerstore.com> were registered on November 10, 2018. The disputed domain names <airwrapvip.com> and <airwrapmall.com> were registered on November 5, 2018 (the Relevant Dates).
At the time the disputed domain names came to the Complainant’s attention the disputed domain names resolved to the active websites “www.airwrapmart.com”, “www.airwrapstylerstore.com”, “www.airwrapvip.com”, and “www.airwrapmall.com”, respectively. Each website was styled to look like the Complainant’s website; each website was headed with the DYSON AIRWRAP trademark, each was devoted exclusively to the Dyson Airwrap styler and made extensive use of DYSON copyright imagery, as is evident when comparing each of the four websites with the Complainant’s own UK-facing website.
5. Parties’ Contentions
The Complainant asserts its rights in the DYSON, AIRWRAP, DYSON AIRWRAP and stylized “dyson airwrap” trademarks. The Complainant contends that the disputed domain names are confusingly similar to its AIRWRAP trademark. It states that the disputed domain names incorporate the Complainant’s AIRWRAP mark in its entirety with the addition of the generic terms “mart”, “stylerstore”, “vip” and “mall” and the generic Top-Level Domain (“gTLD”) “.com”. The Complainant contends that the addition of the generic terms is not sufficient to distinguish the disputed domain names from the Complainant’s AIRWRAP trademark; the Complainant’s Dyson Airwrap styler is sold as a “styler”; the terms “mart” and “mall” are common words used to refer to outlets where consumers may purchase goods, and the term “vip” is simply a well-known abbreviation for “Very Important Person”.
The Complainant also contends that the Respondents have no rights in respect of the disputed domain names; the Respondents are not licensees of the Complainant, nor have they been otherwise allowed by the Complainant to make any use of the AIRWRAP trademark.
The Complainant also contends that the Respondents have no legitimate interests in respect of the disputed domain names. The Complainant alleges that the Respondents have registered the disputed domain names which are very similar to the Complainant’s trademark registrations, which makes them inherently deceptive as to the source of the website. The Complainant contends that the Respondents used the disputed domain names for deceptive and fraudulent purposes to capture Internet users searching for goods sold by the Complainant’s group and to mislead consumers into placing orders (at “hugely discounted prices, often below the production cost of the Complainant’s genuine goods”) and making payments. The Complainant states it is of the belief “that no products will be delivered to such consumers – certainly not the Complainant’s genuine products”. It also contends that the Respondents used the disputed domain names to capture information about the Complainant’s business and to infringe the Complainant’s trademark rights and copyright.
Finally, the Complainant contends that the disputed domain names were registered in bad faith and in full knowledge of the Complainant’s rights.
The Center received informal email communications from the Respondents on February 5, 2019, February 19, 2019, February 22, 2019, and February 26, 2019. On February 5, 2019, and on February 22, 2019, the Center received emails from “[…]@bobgmail.com” asking if there were any problems with the order. On February 19, 2019, and February 26, 2019, the Center received from “[…]@liberto.it” asking for more information about the reason of the complaint.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Preliminary Matter: Consolidation of Respondents
Complainant submits that the Respondents may be joined in a common complaint.
Paragraph 3(c) of the Rules provides that the Complaint may relate to more than one domain name provided the domain names are registered by the same domain name holder. However, paragraph 10(e) of the Rules allows a Panel to consolidate multiple domain name disputes in accordance with the Policy and the Rules.
It has been held that the consolidation of multiple domain name disputes under paragraph 3(c) or 10(e) of the Rules may be appropriate, “even where differently named domain name registrants are involved, where the particular circumstances of a given case indicate that common control is being exercised over the disputed domain names or websites to which the domain names resolve”. See Speedo Holdings B.V. v Programmer, Miss Kathy Beckerson, John Smitt, Mathew Simmons, WIPO Case No. D2010-0281.
The Panel considers that the facts as set out in paragraph 13 of the Complaint strongly indicate that the disputed domain names are under common control. Each of the disputed domain names is registered with GoDaddy.com, LLC, and takes the same form, namely a combination of the Complainant’s trademark AIRWRAP in its entirety and a non-distinctive suffix. Further, the content of the websites to which the disputed domain names resolve is identical across all four websites, including the irregularities in the copyright notice, syntactical and grammatical errors. The record fairly reflects that the Complainant has been the target of common conduct based on the registration and use of the disputed domain names and such conduct clearly affects the Complainant’s rights in the AIRWRAP mark. The Panel further notes that the Complainant’s claims respecting each of the disputed domain names involve common questions of law and fact.
Consolidation of the multiple domain name disputes involving the different respondents listed on the first page of this decision pursuant to paragraph 10(e) of the Rules would be procedurally efficient. Doing so avoids unnecessary duplication of time, effort and expense and generally furthers the fundamental objectives of the Policy.
Accordingly, this Panel, having regard to all the relevant circumstances, concludes that the joining the Respondents in a single proceeding and concerning multiple domain name disputes asserted by the Complainant against the Respondents is consistent with the Policy and the Rules, and is in line with relevant UDRP decisions in this area. The Panel will proceed to a decision on the merits of these disputed domain names.
6.2. Substantive Matters
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain names in order to succeed in this proceeding:
(i) That the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights; and
(ii) That the Respondents have no rights or legitimate interests in respect of the disputed domain names; and
(iii) That the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the trademark AIRWRAP by virtue of its 39 trademark registrations for each of AIRWRAP, DYSON AIRWRAP, and for a stylized version of “dyson airwrap” around the world including in Europe, the United Kingdom, Hong Kong, Japan, Australia, India, New Zealand, the Philippines, Turkey, Singapore and Russian Federation.
The Complainant has also shown that it has extensive trademark rights in the word mark DYSON since 1993. Although the disputed domain names do not use DYSON, nonetheless each website corresponding to the disputed domain names does make use of DYSON. This issue is referred to further in section C below (“Registration and Use in Bad Faith”).
The Panel finds that the disputed domain names contain as a first and dominant element the Complainant’s trademark AIRWRAP, combined with the terms “mart”, “stylerstore”, “vip” and “mall”. It is well established that the addition of dictionary words such as “mart”, “store”, “vip” and “mall” does not prevent a finding of confusing similarity between the disputed domain names and the Complainant’s mark and that the gTLD “.com” may be disregarded for the purposes of comparison under the first element. Further, the word “styler” is itself used by the Complainant to describe its products, the Dyson Airwrap styler.
The Panel therefore finds that all of the disputed domain names are confusingly similar to the Complainant’s mark AIRWRAP.
Therefore, the Panel finds that paragraph 4(a)(i) of the Policy is satisfied in favor of the Complainant.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondents may establish that they have rights or legitimate interests in the disputed domain names, among other circumstances, by showing any one of the following elements:
(i) That before notice of the dispute, the Respondents used or made demonstrable preparations to use the disputed domain names or a name corresponding to a disputed domain name in connection with a bona fide offering of goods or services; or
(ii) That the Respondents have been commonly known by the disputed domain names, even if they had acquired no trademark or service mark rights; or
(iii) That the Respondents are making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers to or tarnish the trademark or service mark at issue.
The overall burden of proof for establishing that the Respondents have no rights or legitimate interests in respect of the disputed domain names lies with the Complainant.
The Complainant has stated, and the Panel accepts, that it has not authorized the Respondents to use its trademark AIRWRAP and the Respondents are not licensees of the Complainant.
The Panel finds that the Complainant has satisfied the burden of establishing a prima facie case that the Respondents have no rights or legitimate interests in the disputed domain names and accordingly finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant.
The Panel is also entitled to have regard to the lack of any substantive response on this point from the Respondents and the absence of any claim to rights in the disputed domain names.
C. Registered and Used in Bad Faith
The Panel is satisfied that the disputed domain names have been registered in bad faith for the following reasons:
(i) At the time of registering the disputed domain names, the Respondents must have been aware of the Complainant, its trademark AIRWRAP and associated trademarks, the Complainant’s exclusive rights in those trademarks and the goodwill residing with those trademarks. The Panel accepts the Complainant’s assertion that its trademarks, company name and company are well known worldwide.
(ii) Further, paragraph 2 of the UDRP puts a burden on registrants where it states “by applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that … to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of a third party … it is your responsibility to determine whether your domain name infringes or violates someone else’s rights.” A most cursory trademark or other online search or any online search of existing domain names prior to the Respondents registering the disputed domain names would have instantly revealed the Complainant and its trademarks. See in this regard section 3.2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Respondents repeated use of the Complainant’s AIRWRAP, DYSON and DYSON AIRWRAP trademarks throughout the content of the websites hosted at the disputed domain names supports a finding that the Respondents knew of the Complainant and its trademarks at the Relevant Dates.
The Panel is also satisfied that the disputed domain names have been used in bad faith for the following reasons:
(i) The websites to which the disputed domain names resolve advertise for sale numerous of the Complainant’s products. The Panel accepts that by using the disputed domain names, the Respondents have, at the very least intentionally attempted to attract, for commercial gain, Internet users to the Respondents websites, by creating a likelihood of confusion with the Complainants’ AIRWRAP trademark and associated trademarks as to the source, sponsorship, affiliation, or endorsement of the websites. The Complainant has provided in evidence in annexes 9 to 12 of the Complaint, screenshots of the websites to which the disputed domain names resolve. These screenshots clearly show use of the Complainant’s AIRWRAP, DYSON and DYSON AIRWRAP trademarks throughout the websites. Further, on comparison with the Complainant’s own website (provided in annex 13) it is immediately apparent that the Respondents have copied images from the Complainant’s own website and used them in the websites to which the disputed domain names resolve. The Panel accepts that use of the Complainant’s trademarks and imagery would lead Internet users to believe that the Complainant is the source of the Respondents’ websites and services, and/or the Respondents are sponsored by, or affiliated with, the Complainant. The confusing similarity is reinforced by the addition of the generic term “styler” in the disputed domain name <airwrapstylerstore.com>. The term “styler” is strongly related to the Complainant by the fact that it labels its own product the Dyson Airwrap styler.
(ii) The likelihood of confusion is further created by the Respondents offering for sale from the websites products corresponding to the Complainant’s products at prices very substantially below those of genuine AIRWRAP products, and indeed below their production costs. These prices are likely to attract consumers looking for the Complainant’s genuine products at a bargain. Again, the Panel is entitled to have regard to the lack of any substantive from the Respondents. There is, for example, nothing to dispute the Complainant’s allegation that products “on sale” are not genuine.
Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied in favor of the Complainant.
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 names, <airwrapmall.com>, <airwrapmart.com>, <airwrapstylerstore.com> and <airwrapvip.com> be transferred to the Complainant.
Andrew Brown Q.C.
Date: March 21, 2019