WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CBI Distributing Corp v. Vanmala Bansode
Case No. D2019-0618
1. The Parties
The Complainant is CBI Distributing Corp of Hoffman Estates, Illinois, United States of America (“United States” or “US”), represented by SILKA Law AB, Sweden.
The Respondent is Vanmala Bansode of Nanded, India.
2. The Domain Name and Registrar
The disputed domain name <claires.asia> 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 March 20, 2019. On March 21, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 22, 2019, 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 March 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 18, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 23, 2019.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on May 9, 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 was founded in the 1960s and is now one of the world’s leading specialty retailers of fashionable jewelry and accessories. It has over 3,400 stores. It operates worldwide using the mark CLAIRE’S as its primary global brand. Details of its operations are set out in Annex 3 to the Complaint.
The Complainant has registered the mark CLAIRE’S in several countries throughout the world including the United States. These registrations pre-date the disputed domain name which was registered on January 24, 2019. The Complainant refers specifically to four US registrations for the mark; Nos. 1891172, 1890335, 1929317, registered in 1995 and 3319826 registered in 2007.
Evidence is given of the Complainant’s presence on social media channels such as Facebook, Instagram, Weheartit and Pinterest in Annex 5 to the Complaint. The Complainant has also registered several domain names including <claires.com>, <claires.us>, <claires.in>, and <claires.cn>.
In the absence of a Response little is known about the Respondent. Immediately after registering the disputed domain name it offered it for sale through the auction site “www.sedo.com” at a price of EUR 10,000. As at the date of the Complaint it remains parked and listed for sale. This is evidenced by Annex 7 to the Complaint.
A search exhibited at Annex 8 to the Complaint shows that the disputed domain name is eventually redirected to the Complainant’s official website <claires.com>.
On January 24, 2019, the date of registration of the disputed domain name, the Respondent offered to sell it to the Complainant as is shown by Annex 9 to the Complaint.
In the absence of a Response and evidence to the contrary the Panel accepts the evidence set out in the Complaint as true and proceeds to determine the Complaint on the basis of that evidence.
5. Parties’ Contentions
The Complainant contends:
1. It has trade mark rights in the mark CLAIRE’S and that the disputed domain name is identical to that mark.
2. The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent does not conduct bona fide trade using the disputed domain name nor is it known by the mark CLAIRE’S. The disputed domain name has been parked for sale and is being used to redirect back to the Complainant’s official website.
3. The disputed domain name was registered and is being used in bad faith. The evidence shows that the Respondent was aware of the Complainant’s trade mark rights at the date of registration and only registered it with the intention of sale to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has subsisting trade mark rights in the mark CLAIRE’S. See section 4 above.
The disputed domain name consists of the word “claires” which is almost identical to the Complainant’s mark CLAIRE’S, together with the generic Top-Level Domain (“gTLD”) “.asia”. It is well established that the gTLD should not be taken into account in deciding the similarity of the domain name with the trade mark relied upon.
Accordingly the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s registered mark CLAIRE’S in which it has rights.
B. Rights or Legitimate Interests
The Panel has found on the evidence that there is no evidence of a bona fide offering of goods or services using the disputed domain name nor is there evidence that the Respondent trades or is known by the mark CLAIRE’S.
The evidence is that immediately after registering the disputed domain name the Respondent put it up for sale and indeed contacted the Complainant the same day offering it for sale.
In addition the evidence shows in Annex 8 that the disputed domain name is redirected to the Complainant’s official website.
On the basis of this evidence and no evidence to the contrary the Panel finds for the Complainant in respect of this element.
C. Registered and Used in Bad Faith
In the Panel’s view the evidence referred to above that the Respondent contacted the Complainant by email on the same day as the disputed domain name was registered and offering it for sale is sufficient evidence of registration and use in bad faith.
In addition there is evidence that the Respondent was involved in another UDRP case:
OSRAM Gmbh v. Vanmala Bansode, WIPO Case No. D2018-1597, in which that panel found that the Respondent had registered a domain name using a well-known mark in bad faith. There is also evidence at Annex 10 to the Complaint that the Respondent had previously registered the well-known fashion trade mark KIABI as a domain name <kiabi.us>.
The Panel also takes into account the evidence set out at Annex 8 to the Complaint of the disputed domain name redirecting users to the Complainant’s official website.
In the absence of a Response and contrary evidence the Panel therefore finds for the Complainant in respect of this element.
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 <claires.asia> be transferred to the Complainant.
Clive Duncan Thorne
Date: May 23, 2019